Case Briefs - IPR PDF

O. P.
Jindal Global University
Case Briefs
Contributions by: B.A.LL.B 2012 Sec. A & E
Edited by: Amit Jyoti S. Gomber
Spring 2015
Compilation © Amit Jyoti S. Gomber 2015

Index
Sr. Case
No.
COPYRIGHT
1. University of London Press v University Tutorial Press [1916] 2 Ch. 601
2. Feist Publications, Inc., v. Rural Telephone Service 499 U.S. 340 (1991)
3. Baker v Selden 101 U.S. 99 (1879)
4. RG Anand v Delux Films AIR 1978 SC 1613Nichols v Universal 45 F.2d 119 (2d Cir.
1930)
5. Nichols v Universal 45 F.2d 119 (2d Cir. 1930)
6. Eastern Book Company v. DB Modak (2008) 1 SCC 1
7. CCH Canadian Limited v. Law Society of Upper Canada [2004] 1 SCR 339
8. Ladbroke v William Hill [1964] 1 WLR 273
9. Walter v Lane [1900] AC 539
10. Eastern India Motion Pictures AIR 1977 SC 1443
11. Amar Nath Sehgal v. UOI 2005 (30) PTC 253 Del
12. Mannu Bhandari v. Kala Vikas Pictures Pvt. Ltd. (1986) 1987 AIR (Delhi) 13
13. Zee Telefilms v. Sundial Communications (P) Ltd. 2003 (5) BomCR 404
14. Perfect 10, Inc. v. Amazon.com, Inc 508 F.3d 1146 (9th Cir, 2007)
PATENT
15. Biswanath Prasad Radhey Shyam v Hindustan Metal Industries AIR 1982 SC 1444
16. Diamond v. Chakrabarty 447 U.S. 303 (1980)
17. Harvard College v. Canada (Commissioner of Patents) [2002] 4 S.C.R. 45
18. Bilski v. Kappos, 561 U.S. 593 (2010)
19. Dimminaco A.G. v. Controller of Patents Designs (2002) I.P.L.R. 255
20. Novartis v Union of India AIR 2013 SC 1311
21. Association of Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013)
22. Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014)
23. University of Utah Research v. Ambry Genetics, Corp. 3 F. Supp. 3d 1213
24. Bayer v Union of India 2013 Indlaw IPAB 20
25. Graver Tank & Manufacturing Co. v. Linde Air Products Co.4 (Graver Tank II ) 339
U.S. 605 (1950)
26. Kirin-Amgen v. Hoechst [2005] RPC 9
27. Ravi Kamal Bali v Kala Tech 2008 (38) PTC 435 (Bom)
TRADEMARKS
28. Abercrombie & Fitch Co. v. Hunting World, Inc 537 F.2d 4 (2d Cir. 1976)
29. Kellogg Co. v. National Biscuit Co.
30. Aggarwal Sweet Palace & Ors. V. Assistant Registrar of Trade Marks
31. Imperial Tobacco Company v. Registrar of Trademark, AIR 1968 Cal 582
32. Amritdhara Pharmacy v Satyadeo AIR 1963 SC 449
O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 1
33. F. Hoffmann-La Roche v Geoffrey Manners AIR 1970 SC 2062
34. Corn Products Refining v. Shangrila Food Products Ltd- AIR 1960 SC 142
35. Benz v Hybo Hindustan AIR 1994 Delhi 239
36. Balkrishna Hatcheries v Nandos Int’l Ltd 2007 (35) PTC 295
37. Cadila v Cadila 2001 (21) PTC 541 (SC)
38. ITC v. Philip Morris Products 2010 (42) PTC 572 (Del.)
39. Tata Chemicals Ltd. v. Deputy Reg.- 2003 (27) PTC 422 Del
40. Pepsi Co. v Hindustan Coca Cola Ltd., 2003 (27) PTC 305
41. Dongre v. Whirlpool 1996 PTC (16)
42. Bollinger v Costa Brava Wine Co Ltd [1960] 1 All ER 561
43. Reckitt & Colman v Borden [1990] 1 All E.R. 873
44. Venugopal v Ushodaya (2011) 4 SCC 85

University of London Press, Limited v. University Tutorial Press, Limited.
[1916 U. 119.] [1916] 2 Ch. 601
Keywords: original literary work; assignment; authorship; ownership; contract for service;
infringement.
Facts : The examiners (Professor Lodge and Mr. Jackson) were appointed for a matriculation
examination of the University of London, a condition of appointment being that any copyright in
the examination papers should belong to the University. The University agreed with the plaintiff
company (University of London Press, Limited) to assign the copyright, and by deed purported
to assign it to the plaintiff company. After the examination the defendant company (University
Tutorial Press, Limited) issued a publication containing a number of examination papers
(including three which had been set by two examiners who were co-plaintiffs), with criticisms on
the papers and answers to questions. The university of London Press, Limited, commenced this
action against the Tutorial Press, Limited, for infringement of copyright.
ISSUE I: Are examination papers within the meaning of this Act, ‘literary works’?
HOLDING: The Copyright Act (UK Law) provides for copyright in “every original literary
dramatic musical and artistic work”. The term “literary work” has not been defined in the Act
but according to the Act, “Literary work’ includes maps, charts, plans, tables and compilations”.
It covers work, which is expressed in print, or writing, irrespective of the question whether the
quality or style is high. The word “literary” refers to written or printed matter. The papers set by
examiners entailed the exercise of brainwork, memory and trained judgment, and even selection
of passages from other authors’ works involved careful consideration, discretion and choice and
thus “literary works” within the meaning of the present Act.
ISSUE II: Assuming that the papers are “literary work”, the question is whether they are
original?
HOLDING: “The word “original” does not mean that the work must be expression of original
or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the
expression of thought, and in the case of “literary work”, with the expression of thought in print
or writing. The originality, which is required, relates to the expression of the thought. But the Act
does not require that the expression must be in an original or novel form, but that the work must
not be copied from another work - that it should originate from the author.”
Examiners proved that they had thought out the questions which they set, and that they made
notes or memoranda for future questions and drew on those notes for the purposes of the
questions, which they set. The papers, which they prepared, originated from themselves, and

were, within the meaning of the Act, original. The papers set by Professor Lodge and Mr.
Jackson are "original literary work" and proper subject for copyright under the Act.
ISSUE III: In whom did the copyright in the examination papers vest when they had been
prepared?
HOLDING: The examiner was employed to prepare the papers on the subject in respect of
which he was elected or appointed examiner. He had to set papers for September, 1915, and
January and June, 1916, and his duty also comprised the perusal of the students' answers, and the
consideration of the marks to be awarded to the answers. For this he was to be paid a lump sum.
He was free to prepare his questions at his convenience so long as they were ready by the time
appointed for the examination, and it was left to his skill and judgment to decide what questions
should be asked, having regard to the syllabus, the book work, and the standard of knowledge to
be expected at the matriculation examination. It is true that the University issued instructions to
examiners for the conduct of the examination, but these instructions are only regulations framed
with a view to securing accuracy in the system of marking. Professor Lodge and Mr. Jackson
were regularly employed in other educational establishments and were not part of the staff of the
London University, and it was not suggested that the other examiners were on the staff of the
University. Therefore, the examiner in such circumstances can be appropriately described as in
contract for service with the University. The copyright was vested in the examiners, but the
University was equitably entitled to it subject to the assignment agreement between the examiner
and the University. The University assigned its rights to the plaintiff company, which is now
equitably entitled to the copyright.
ISSUE IV: Whether the defendants have infringed the copyright in the papers prepared by
Professor Lodge and Mr. Jackson?
HOLDING: Examination papers are useful for educational purposes. Recognizing this demand,
the plaintiff company published the matriculation papers. With the same object in view, the
defendants published the "London Matriculation Directory," which included the papers on
arithmetic and algebra, geometry, and more advanced mathematics, set by Professor Lodge and
Mr. Jackson. The defendants on these facts contend that their publication of the three papers set
by Professor Lodge and Mr. Jackson is a fair dealing with them for the purposes of private study
under the Act, and is therefore not an infringement of copyright.
It could not be contended that the mere republication of a copyright work was a "fair dealing"
because it was intended for purposes of private study; nor, if an author produced a book of
questions for the use of students, could another person with impunity republish the book with the
answers to the questions. Both publications are intended for educational purposes and for the use
of students but the defendants have failed to bring themselves within the protection of the Act.
Therefore the plaintiffs ought to succeed so far as the questions prepared by Professor Lodge and

Mr. Jackson for the examination in January, 1916, are concerned, and that the present action, so
far as it relates to the papers set by the other examiners, fails.

Feist Publication, Inc. v. Rural Telephone Service Company
499 U.S. 340, Supreme Court of the United States of America
Keywords: Facts; compilation; originality; selection, arrangement and coordination; de

minimis; minimal level of creativity.
Facts: Rural Telephone Service Company is a certified telephonic service provider operating in
Kansas. Owing to a state regulation it is subjected to print and issue a telephone directory
consisting information about individual subscriber in the white pages and advertisements of
subscribers on the yellow pages. Feist Publication is a publication company which specializes in
area-wide telephone directories. Unlike a typical directory, which covers a specific area, Feist
publishes a directory which covers a much larger geographical area.
Rural Inc. is the sole provider of telephone services in that particular area in Kansas, it
obtains the information for the directory quite easily. However, Feist just being a publication
house lacks independent access to any subscriber information therefore approaches individual
telephone service provider companies for information. 10 out of 11 companies shared the
information such that Feist could publish it in their respective directory but Rural Inc. trying to
attract the subscribers in its area for yellow page advertisements did not.
Despite being denied the information of the subscribers in that particular region of
Kansas, Feist Publication went ahead and used the white pages listing of Rural’s directory
without their consent but added additional information such as address which was not present in
the Rural’s version. Due to the presence of 4 fictitious listings that Rural had inserted into its
directory to detect copying, Feist was sued by them for copyright infringement.
Procedural History: Rural Inc. sued Feist Publication for copyright infringement in the District
Court for the District of Kansas stating that Feist’s employees were obliged to travel door-to-
door or conduct a telephone survey to discover the information which they had copied. District
Court granted a summary judgment to Rural, explaining that “courts have consistently held that
telephone directories are copyrightable”. An appeal was preferred from the judgment to the
Court of Appeals for the Tenth Circuit which affirmed the decision of the District Court.
The Supreme Court granted the writ of certiorari to finally adjudicate upon the matter.
Laws involved: *US COPYRIGHT LAWS* § 102 (a) and (b) of the Copyrights Act, 1976
which states that “In no case does copyright protection for an original work of authorship extend
to any idea, procedure, process, system, method of operation, concept, principle, or discovery,
regardless of the form in which it is described, explained, illustrated or embodied in such work.”

Section 101 of the Copyrights Act, 1976 provides that a copyright is “a work formed by
the collection and assembling of preexisting materials or of data that are selected, coordinated, or
arranged in such a way that the resulting work as a whole constitutes an orginal work of
authorship”
Issues: Whether the copyright in Rural’s directory protects the names, towns, and telephone
numbers copied by Feist.
Analysis: The Supreme Court after looking at the Copyrights Act emphasized that the statute
identifies three distinct elements and requires each to be met for a work to qualify as a
copyrightable compilation: (1) the collection and assembly of pre-existing materials, facts, or
data; (2) the selection, coordination, or arrangement of those materials, and (3) the creation, by
virtue of the particular selection, coordination, or arrangement, as an “original” work of
authorship. Quoting the case of Mill Musiç469 U.S., at 164, the Supreme Court states that the
“this tripartite conjunctive structure is self-evident, and should be assumed to ‘accurately express
the legislative purpose.’ ”
In the field of Copyright law, facts are not copyrightable as they are a product of mere
discovery but the compilation thereof in different arrangements would be copyrightable as it
satisfies the originality requirement (“an original work of authorship”). Therefore, in determining
whether a fact-based work in an original work of authorship, it must be tested on the manner in
which the collected facts have been selected, coordinated and arranged. For every arrangement
of facts to past the muster, it must be selected, coordinated and arranged “in such a way” as to
render the work as a whole original.
The raw data which Rural had certainly did not satisfy the originality requirement. Rural
Inc. may have been the first to discover and report the names, towns and telephone numbers of
tis subscribers, but this data does not “owe its origin” to Rural. Rather, these bits of information
are un-copyrightable facts; they existed before Rural Inc. reported them and would have
continued to exist if Rural Inc. had never published a telephonic directory. Also, Rural did not
truly “select” to publish the names and telephone numbers of its subscribers; rather it was
required to do so by the Kansas Corporation Commissions as part of its monopoly franchise.
Accordingly, it can be presumed that the selection was dictated by state law, not by Rural.
Conclusion: The names, towns and telephones numbers copied by Feist were not original to
Rural and therefore were not protected by the copyright in Rural’s combined white and yellow
pages directory. As a constitutional matter, copyright protects only those constituent elements of
a work that possess more than a de minimis quantum of creativity. The alphabetic arrangement
of subscriber’s information does not afford protection from copying as it utterly lacks originality.
Therefore, Feist listings cannot constitute infringement.

Decision: The decision of the Court of Appeals is Reversed.
Ratio: For a piece of work to get protection under copyrights law, the following conditions must
be met –
a) the collection and assembly of pre-existing materials, facts, or data;

b) the selection, coordination, or arrangement of those materials, and
c) the creation, by virtue of the particular selection, coordination, or arrangement, as an
“original” work of authorship.

Baker v. Selden
101 U.S. 99 (1879)
Keywords: Method/ System/ Art; Copyrightable elements; Non-Copyrightable elements; Idea-

Expression Dichotomy; Infringement.
Facts: Charles Selden (P), obtained a copyright of the book “Selden’s Condensed Ledger or
Book-Keeping Simplified” in 1859 and this book explained a unique and improved system of
book-keeping with a distinct arrangement of columns and headings. In 1867, Baker, the
defendant, produced another book using a similar system but the arrangement of columns and
their headings were different.
Procedural History: A suit was filed against the D for infringing copyrights of Selden’s book as
Baker had used a system that resembled the one used in Selden’s work and the lower court ruled
in favor of P. The D then appealed to the US Supreme Court.
Issues:
1) Did the D infringe the copyright?

2) Did Selden have an exclusive right to the use of the system explained in his book?
Holding:
1) No, the D did not infringe copyright of the book “Selden’s Condensed Ledger or Book-
Keeping Simplified”.
2) No, Selden did not have an exclusive right to the use of the system explained in his book.
Rationale: The court reasoned that an author can explain the truths of a science or the methods
of an art through his book and can obtain a copyright for his work but this copyright is limited to
the expression of the method or system and does not extend to the idea or the system itself. If the
author wants to protect the system/idea he will have to be granted a patent for his method/idea
and protecting an idea under the copyright law would amount to fraud on the public.
Copyright protects the book as a whole and the expression of an idea through that book. The very
object of publishing a book is to impart some knowledge to the public and if people were made
liable of infringement each time they used the idea described in the book, it would defeat the
purpose. Copyright is mainly concerned with publishing and selling rights and does not give the
author exclusive rights over an idea alone.
In this case, Baker was not infringing the copyrights of Selden’s book as he borrowed the idea
from Selden’s book but expressed it in a different manner by ensuring that the columns and
headings to those columns were different.

Rule: Idea-Expression Dichotomy: A copyright can be obtained only over a particular
expression of an idea, it does not protect the idea that underlies that expression and this is what
limits copyrights and differentiates it from patents. An idea/art/method can be patented whereas
the expression of an idea/art/method can be copyrighted.

R.G. Anand v. Delux Films
(1978) 4 SCC 118: AIR 1978 SC 1613
Keywords: Substantiality test; Copyrightable elements; Non-Copyrightable elements;

Idea/Subject matter/ plot/ theme/ facts; Spectator/ viewer test.
Facts: The Plaintiff (P) wrote a script for a play of the name “Hum Hindustani” in 1953 and it
was enacted in New Delhi theatres in that year. The play was based on the concept of
Provincialism, and was well received so P started considering the possibility of filming it. The
Defendant (D) approached P in 1954 after an eminent scriptwriter told him about the play when
D was considering making a movie on the topic of Provincialism. On hearing the script D told P
that he would inform P of his decision upon return to Mumbai. In 1955 D announced the
production of a movie called “New Delhi”, after watching the movie, one of the artists in the
play told P that it was similar to the play. P wrote to D about his concerns that the movie was a
copy of the play, and D told P that the movie was on the topic of Provincialism but it was not
based on the play as the play in itself wasn’t enough for a movie and the characters and story
treatment, etc. was very different from the play. P read newspaper comments about the movie
and then later watched the movie himself and felt that the movie was entirely based on the play.
He found that the movie had one character with the same name as in his play. P therefore filed a
suit of the infringement of his copyrights.
Procedural history: The Delhi High Court held that the similarities between the movie and the
play were insignificant and although both the copyrightable subject matters were based on
provincialism, the stories and portrayal in the movie were completely different from the play.
Dissatisfied with the holding, P appealed to the Supreme Court.
Issues:
1. Whether the cinematographic film was colourable imitation/ substantial or material copy
of the play?
2. Whether a name of a person in a copyrightable subject matter can also be copyrighted?
Holding:
1. The Supreme Court held that the movie although based on the same concept, wasn’t a
copy of the play. Therefore, there was no copyright infringement by D.
2. The court also held that the name “Subramaniam” which appeared in both the movie and
the play wasn’t copyrightable; therefore the use of the name wouldn’t result in copyright
infringement.

Rationale: The similarities and coincidences as observed by the court were insignificant and
were not sufficient to raise an inference of colourable imitation. The play relied heavily on the
idea of provincialism; it did not touch the other aspects of “caste” and “sati” that the movie had
explored. The Supreme Court also observed that the three aspects in the film were completely
integral to the movie and could not be divorced from each other without affecting the beauty and
the continuity of the script. The story in the movie also went beyond the plot represented in the
play. The dissimilarities in the between the movie and the play were so material that it was not
possible to say that P’s copyright had been infringed.
Rule: The Supreme Court laid down 7 rules, after considering the precedents, to determine if
there was a copyright infringement:
1. “There can be no copyright in an idea, subject matter, themes, plots or historical or

legendary facts and violation of the copyright in such cases is confined to the form,
manner and arrangement and expression of the idea by the author of the copyright work.”
2. “In order to be actionable the copy must be a substantial and material one which at once
leads to the conclusion that the defendant is guilty of an act of piracy.”
3. “Seeing the reader, spectator or the viewer after having read or seen both the works is
clearly of the opinion and gets an unmistakable impression that the subsequent work
appears to be a copy of the original.” If the answer is in the positive then it can be
concluded that there is a copyright infringement.
4. “Where the theme is the same but is presented and treated differently so that the
subsequent work becomes a completely new work, no question of violation of copyright
arises.”
5. “If there are also material and broad dissimilarities which negative the intention to copy
the original and the coincidences appearing in the two works are clearly incidental no
infringement of the copyright comes into existence.”
6. “It must be proved by clear and cogent evidence after applying the various tests laid
down by the case laws.”
7. “Although unlike a stage play a film has a much broader prospective, a wider field and a
bigger background where the defendants can by introducing a variety of incidents give a
colour and complexion different from the manner in which the copyrighted work has
expressed the idea. But if the viewer gets a totality of impression that the film is by and
large a copy of the original play, violation of the copyright may be said to be proved.”

Nicholas v. Universal Pictures Corp.
45 F.2d 119 (2d Cir. 1930)
Keywords: Theme/ Plot/ Idea; Non-Copyrightable elements; Copyrightable elements; abstract idea;
stock characters; scenes a faire; substantial similarity; infringement.
Facts/Procedural History: Anne Nichols (plaintiff) wrote a play called the “Abie’s Irish Rose.”
The play was about an Irish father and a Jewish father whose children married each other in
secret because they feared that their fathers would not have approved. The underlying theme of
the play was the hatred between the fathers for each other and for the relationship of their
children. The animosity between the fathers was based on their religious differences. Eventually,
the children had their own children and as a result, the fathers reconciled. Much humor and
comedy was followed in the play. After the play had exhausted its Broadway debut, Universal
Pictures Corporation (Universal) (the defendant) made a movie called “The Cohens and the
Kellys.” The movie was also based on an Irish Catholic and a Jewish family whose children wed.
The fathers similarly did not get along, but not due to their differing religions, more on account
of the general animosity of the Jewish father, which is to say that only one of the fathers held the
story grudge. Also similarly, the children had their own child, and the fathers eventually
reconciled. However, in the movie, the grandchild had nothing to do with the reconciliation. The
main themes throughout “The Cohens and the Kellys” were family finances and the relationship
between wealth, generosity and how honesty brings families together. Religion did not play a
role. The plaintiff asserted copyright infringement in the lawsuit based on the premise that
defendant used similar story elements. The district court found in favor of Universal. Nichols
appealed.
Issue: Whether the defendant's film (The Cohens and the Kellys) had infringed the plaintiff's
copyright in the play (Abie’s Irish Rose) by using similar elements?
Holding/Judgment: The Appellate Court noted that a work could be a copy of an earlier work
even if it didn't copy the literal text, but the two works needed to be substantially similar. The
Court also found that although the play and the movie shared a number of the similar themes and
general plots, the similarities general things, universal concepts, and stereotypical characters
(stock characters). There was nothing unique to Nichols' play that was found in Universal's
movie.
Rational: The court based its decisions on the Scenes å faire doctrine which reasons that
copyright does not extent to incidents, character, or settings that are as a practical matter,
indispensable or at least industry standard in the behavior/common practice of a given topic. So
for example, all police shows are going to have the same stereotypical characters, but those
similar characters are no copyright violations.

Eastern Book Company v. D.B. Modak
(2008) 1 SCC 1
Keywords: Originality; Literary work; Modicum level of creativity; Derivative work;

independent work; skill, labour and capital; copyright in judgements; Defenses – S.52(1)(a)(iv).
Fact: Eastern Book Company A (1) and Eastern Publishers Pvt. A (2) are the Appellant (A) who
are into publishing law books. The appellant publish law report containing Supreme Court cases
by the name of “Supreme Court Cases (SCC)”. The case are procured from the register of the
Supreme Court. The judgement are copy edited and several inputs such as font, paragraphing are
made so as to make it user friendly. Along with the changes in the judgement, it also has head
notes and foot notes which are prepared by the A (3) Surendra Malik. The Respondents(R) have
created a software which is published on a CD ROM by the name of Grand Pix and The Law and
the R’s have copied the whole module from the SCC on to the CD ROM.
Procedural History: EBC moved to the court before the single bench judge of the Delhi High
Court claiming for temporary injunction as the R’s has constituted infringement by copying the
copy edited version of the judgement prepared by EBC. The Single Judge Bench did not grant
injunction and held that the edited judgement was not copyright and hence there is no
infringement. The R conceded that the A had a copyright over the headnote and the footnote and
hence agrees to not copy them. Aggrieved by the decision the A moved to Division Bench of the
Delhi High Court, the court also didn’t grant them temporary injunction and allowed them to sell
the CD ROM and held that by making some changed the original judgement it does not change
the characteristic of the judgement and hence it doesn’t constitute as original work. The court
didn’t accept the A case and hence forth the present decree lie.
Laws Involved: Sections 13, 14 and 52(1)(iv)(q), Copyright Act, 1957
Issues:
1) What shall be the standard of originality in a derivative work to get © protection and
what requirement need to be there for its fulfilment?
2) Whether the whole copy-edited version of the judgement will be entitled for © or only
entitled to some of the inputs made in the judgement?
Holding: The court gave the decision in the favour of A’s. The court held that for a derivative
work to have © protection it should show that the derivative work should be more than a just
mere copy of the original work and it should have authors own independent skill, labour and
capital. The court stated that © has nothing to do with literary merit of the work. The court just
need to evaluate whether the skill employed is not of trivial or negligible but substantial. The
court also held that the R’s should not copy the paragraphs made by the A for its internal

referencing and nor should the R’s use the view of the judges regarding their view as to whether
they have a dissenting or concurring in the Case.
Rationale: The court came to this conclusion after taking into account whether the derivative
work is original work of the author and whether he has spent independent skill, labour and
judgement in preparing it and that it is just not a mere copy of the original work. Secondly the
judges have also taken into account that the changes made by the author in the derivative work
are of substantial work and is not of trivial nature. Thirdly the judges have applied the principal
of “Sweat of the brow” which means that the author deserves to be reward for the skill. Fourthly
the court referred to the principle of minimal degree of creativity that states that there should be a
minimal level of creativity in the derivative work in deciding the issue whether the copy edited
judgement would qualify as original work or not.
Rule: It is derived from this case that even in a derivative work if the author has applied his own
skill, labour and judgement then it will be entitled to © protection. The court in such cases need
not look in the literary merit of the work but just that the some skill is involved. In case where
the copy edited version is created then the changed that require a skill or judgement should be
considered original work and should be entitled to © protection.
Conclusion: The Court did grant interim relief to the plaintiff-appellants by directing that though
the respondent shall be entitled to sell their CD-ROMS with the text of the judgments of the
Supreme Court along with their own head notes, editorial notes. It was further directed bt the
courts that the respondents shall not use the paragraphs made by the appellants in their copy-
edited version for internal references and their editor's judgment regarding the opinions
expressed by the Judges by using phrases like concurring', 'partly dissenting', etc. on the basis of
reported judgments in SCC. The judgment of the High Court was modified to the extent that in
addition to the interim relief already granted by the High Court, the above-mentioned additional
relief to the appellants was also granted.

CCH Canadian Ltd v Law Society of Upper Canada
[2004] 1 S.C.R. 339, 2004 SCC 13
Keywords: Originality; skill and judgment; infringement; defense – research.
Facts: The Law Society of Upper Canada (Respondent) has a library offering both custom and
self serve photocopy service. CCH Canadian Limited (Appellant) sues for infringement of
copyright in 11 specific works and asks for a permanent injunction preventing further copying.
Law Society denies the infringement and files a counterclaim to declare that its activities did not
infringe the publishers copyrights, by either providing single copy for research purpose or by
allowing patrons to avail themselves of the self-service photocopiers.
Procedural History: The Federal Court trial division and Federal Court of Appeal allowed the
publishers claim in part and then the Law society appealed in Supreme Court of Canada.
Issues:
1) Are the publishers’ materials “original works” protected by copyright?

2) Did the Great Library authorize copyright infringement by maintaining self-service
photocopiers and copies of the publishers’ works for its patrons’ use?
Judgment:
1) Are the publishers’ materials “original works” protected by copyright? Court held as
following.
a) Headnotes – Yes, it is an original work.
Court said that although headnotes are inspired largely by the judgment they are not an identical
copy of the reasons. Part of the judgement can be selected and can be arranged according to
one’s choice. Making these decisions require the exercise of skill and judgment and the authors
need to have knowledge of the subject for the same.
b) Case Summary- Yes, for the same reasons as mentioned above case summary is also an
original work therefore covered by copyright.
c) Topical Index- Yes.
It provides a listing of cases with short headings to indicate the main topics covered by the
decision and very brief summaries of the decisions. The author has to decide which headings and
cases to include and which cases should fall under which headings. These decisions would
require the exercise of skill and judgment.
d) Reported Judicial Decisions – they have copyright over the compilation but not on
judicial decisions themselves.
The authors have arranged the case summary, case title, case information (the headnotes) and the
judicial reasons in a specific manner. The arrangement of these different components requires
the exercise of skill and judgment. The judicial reasons in and of themselves, without the
headnotes, are not original works in which the publishers could claim copyright.
2) Did the Great Library authorize copyright infringement by maintaining self-service

photocopiers and copies of the publishers’ works for its patrons’ use?
No, library did not authorize copyright infringement. For self service photocopiers court said
that there was no evidence that the photocopiers had been used in a manner that was not
consistent with copyright law. Court noted that a person does not authorize copyright
infringement by authorizing the mere use of equipment (such as photocopiers) that could be
used to infringe copyright. For copies for patrons court held that not all request were
honoured. Secondly, they granted copies to patrons for research work, which was exemption
of copyright infringement.
Rationale: For a work to be “original” within, it must be more than a mere copy of another
work. At the same time, it need not be creative, in the sense of being novel or unique. What is
required to attract copyright protection in the expression of an idea is an exercise of skill and
judgment. The exercise of skill and judgment required to produce the work must not be so trivial
that it could be characterized as a purely mechanical process, it should include intellectual effort
of the author.
Rule: Standard of Review laid in this case – exercise of skill and judgement in the work.

Walter v. Lane
[1900] AC 539
Keywords: Originality; Authorship; Ownership; Level/ Standard of creativity; effort, skill and
time; sweat of the brow.
Facts: Earl of Roseberry gave public speeches on five occasions. Reporters from The Times and
other newspapers attended them. The reporters from The Times had taken down shorthand notes
of the speeches and later the corrected, revised and punctuated their reports for publication in
Times. Reporters were employed under the terms that the © in all the materials composed by
them for The Times belonged to the proprietors. D published a book on Earl’s speeches which
substantially included reports published in The Times. Lord Roseberry did not claim any ©. The
proprietors, being the © holder brought an action for breach of © and also sought for injunction,
damages and costs.
Procedural History:
 The case was reported to the Chancery Division where North J. held that the reporters
have © in the report and not the speech and entitled them for injunction against D. D
appealed.
 The Court of Appeal (CoA) held that a report is not an actual composition and there is no
© and allowed D’s appeal.
 P appealed in House of Lords (HoL), the writing court. The writing court reversed the
judgment of CoA and restored North J.’s decision and granted perpetual injunction.
Issue: Whether the reporters of the speech could be considered "authors" under the terms of the
Copyright Act?
Holding: P won. It was held that a person who makes notes of a speech delivered in public,
transcribes them, and publishes in a newspaper a verbatim report of the speech, is the “author” of
the report within the meaning of the Copyright Act 1842, is entitled to the copyright in the report
and can assign the copyright.
Rationale: Copyright existed in reports prepared by shorthand writers’ of public speeches as

‘original literary’ works. The speeches were made by the Earl of Rosebery in public when
reporters were present. The reporters made notes in shorthand, transcribed them, corrected,
revised and punctuated them and published them in newspapers as verbatim reports of the
speeches. A speech and a report of a speech are two different things. Lord Roseberry was the
author of his speeches. The shorthand writers were the authors of their reports of his speeches.
They spent effort, skill and time in writing up their reports of speeches that they themselves had
not written. Even though the reporters had intended only to reproduce the speeches as accurately

as they could, the works they prepared remained original works. This is an example of sweat of
the Brow Doctrine.
Rule: The creator of a copyrighted work, even if it is completely unoriginal, is entitled to have
his effort and expense protected, and no one else may use such a work without permission, but
must instead recreate the work by independent research or effort.

Ladbroke (Football) Ltd. v William Hill (Football) Ltd.
[1964] 1 W.L.R. 273
Keywords: Originality; Substantiality; Infringement; Skill, Labour and Judgment; Minimum

level of creativity; compilation
Facts: Since 1951 Williams (respondents), who were well-known bookmakers, had sent their
customers each week fixed odds football betting coupons arranged in a certain general form. In
1959 Ladbroke (appellants), who were also bookmakers, started to send out coupons closely
resembling the respondents. It appeared that the respondents had not altered the general form of
their coupon since 1951. A coupon was a sheet of paper on which' were printed several lists of
forthcoming matches. The respondents' coupon contained 16 lists, each with an appropriate
name. The appellants' coupon contained 15 lists. The lists offered by the appellants were almost
identical with those offered by the respondents in their corresponding lists. What the appellants
adopted from the respondents were the types of wagers and to a large extent the arrangement and
the heading. The only differences were that the appellants devised new headings and they
worked out for themselves the different odds offered in respect of the various kinds of bets
which, accordingly, they did not copy. And it was impossible to copy the selections of matches:
the selections must be from the matches to take place in the following week, so there would not
be time for one bookmaker to copy from .the coupon of another matter which alters every week.
The coupons of some 20 other firms in the business were produced at the trial, and, while they
have a general similarity, they vary very much in the nature of their lists and the variety of bets
offered in respect of many of the lists. It is not disputed that a vast amount of skill, judgment,
experience and work has gone into building up the respondents' coupon.
Procedural History: Judgment of Lloyd-Jacob J. given on June 26, 1962, held (inter alia) that
the respondents' claim to copyright in their fixed odds football coupon or coupons failed on a
point of law but adjudged that the respondents should recover one half of their agreed or taxed
costs. The Court of Appeal held that the respondents were entitled to copyright and granted them
an injunction and awarded the respondents the sum of 40s. as damages. This case is an appeal to
the order from The Court of Appeals.
Issues:
1) Whether or to what extent copyright attaches to these coupons? In whole or in part?
2) If the coupons are subject to copyright, has enough copying been done to amount to
infringement and whether it was proper to look at the several parts of the work
separately?
Judgment: Copyright Act is not concerned with the “originality of ideas”, but with the
expression of thought, and, in the case of ' literary work, with the expression of thought in print
or writing. The originality which is required relates to "the expression of the thought”. As
regards compilation, originality is a matter of degree depending on the amount of skill, judgment
or labour that has been involved in making the compilation. The precise amount of knowledge,
labour, judgment or literary skill or taste which the author must bestow in order to acquire
copyright must in each case be very much a question of degree. Rough practical test is that “what
is worth copying is prima facie worth protecting”. When all the hard work has been done in
deciding upon the wagers to be offered, there still remains the further distinct task, requiring
considerable skill, labour and judgment (though of a different kind) in the way in which the
chosen wagers are expressed and presented to the eye of the customer.
The extent to which the appellants copied from the respondents’ coupon appears to amount to be
a very substantial part of the coupon both in quantity and quality. Therefore, there has been an
infringement in this case.
Conclusion: This case is important for a better understanding of copyright because it establishes
that for a work to be protected under copyright its expression must be original. In order to
determine originality you must see the facts of the case and determine if any skill, labour and
judgment was used to make the work, or any part of the work. If so, the whole work will be
copyright protected and it is no defence to claim that you only copied the parts that didn’t require
skill or judgement. Here, respondents’ coupon was a compilation and so an original literary
work, the subject of copyright and appellants had reproduced a substantial part of it, therefore
breached.

NOTE: This case was decided in 1977 and with Copyright (Amendment) Act, 2012 there has been a significant
change with respect to the provisions of law discussed in the case. Please keep this change in mind and apply
the latest law to decide any problem question. The case discussed below, however, has a jurisprudential value.
Indian Performing Rights Society vs. Eastern India Motion Pictures
(AIR 1977 SC 1443)
IPRS PRODUCERS COMPOSERS/ LYRICIST

Society charging fees Objected claiming that they The original composers do not get
any
for public performances are the first authors and right of their work.
of musical works. they shouldn’t pay any fees.
Facts:
 IPRS was a company incorporated for charging fees for granting licenses for performance
in public of all existing and future Indian Musical works.
 The Producers Association objected to this under section 34 of the Copyrights act
claiming that the producers being the authors and first owners of the copyright in the
cinematographic films.
 The Cinematograph Exhibitors Association of India also objected to this. They averred
that Copyright in a cinematographic film which vested in the producers meant copyright
in the entirety of the film including the musical work incorporated in the sound track of
the film and the right to perform the work in the public.
Issue: Whether the composer of lyric or musical work retains the copyright in the lyric or the
music work after he has allowed the producer to use that lyric or music in the cinematographic
film?
Procedural History: Copyright Board held that the composers of lyrics and music retained the
copyright in their musical works incorporated in the soundtrack of cinematographic films
provided such lyrical or musical works were printed or written and that they could assign the
performing right in public to the IPRS. It also held that IPRS could collect fees and charge
royalties in respect of those films. High Court reversed the order. Hence this appeal by IPRS.
Holding: The Court held in the favour of the producers ordering that they are the first owners of
the cinematographic film. And since there is a contract of service and the film is made on the
direction of the producers, they will have right over the soundtrack and IPRS can’t charge any
fees.
Analysis:

 A composer who composes a lyric or music for the first time for a valuable consideration
for a cinematographic film does not acquire any copyright. The owner of the film at
whose instance the composition is made becomes the first owner of the copyright in the
composition.
 The composer can claim a copyright in his work only if there is an express agreement
between him and the owner of the cinematographic film reserving his copyright.
 Though Section 18 of the Act confers power to make a contract of assignment, the power
can be exercised only when there is an existing or future right to be assigned and that in
the circumstances of the present case, assignment, if any, of the copyright in any future
work is of no effect.
Rule: The rights of the music composer or lyricist can be defeated by the producer of a
cinematographic film in the manner laid down in provisos (b) and (c) of Section 17 of the Act.

Amar Nath Sehgal v Union of India
(2002) 63 DRJ 558
Keywords: Moral rights; right to integrity; right to paternity; S. 57; commissioned work;
Copyright ownership with the Government.
Facts: Mr. Amar Nath Sehgal is the world-renowned sculpturist and has been conferred
with several awards for his beautiful creations and contribution to the Indian heritage. In the
year 1957, the Government of India commissioned Mr. Sehgal for the creating bronze mural
for the most prominent International Convention Hall in the Capital of the Country. The
Bronze sculpture of about 140ft. span and 40ft. sweep took five years to complete and was
placed on the wall of the Lobby in the Convention hall. This embellishment on a national
architecture became a part of the Indian art heritage.
In the year 1979 when government pulled down the sculpture from the walls of ‘Vigyan
Bhawan’ and dumped it in the storeroom. When Mr. Sehgal came to know of this ill
treatment, he made representations to the government authorities for restoration of the
mural. Unfortunately, all his pleas fell on deaf ears. Aggrieved by the apathy of the
government officials, Mr. Seghal filed a petition in the Delhi High Court for recognition and
enforcement of his rights on the mural.
Laws involved: Section 57 of the Copyright Act.
Issues:
1) Whether the plaintiff (Amar nath Sehgal) is entitled to the special rights u/s 57 of the
Copyright Act even after the copyrights are vested in the interest of the defendants?
2) Whether there are any damages in respect of any distortion, mutilation, modification
or other act in relation to the said work, which is done before the expiration of the
term of copyright?
Analysis: The work of art or any work which have some kind of creativity involved also
have some kind of sentiments or the sense of ownership attached to it. These moral values
should always be respected. Special rights u/s 57 of the Copyright Act are very important
laws, which give the rights to the author or any person who makes anything to claim the
damages against any kind of distortion, mutilation or modification without the consent of
the author.
This is the landmark case in which the moral rights were considered. The judgment states
that these rights are independent of the author's copyright. They exist even after the
assignment of the copyright, either wholly or partially. Secondly, The court stated that the

defendants moved the mural without the prior permission of the author and in addition to it
the mural was also damaged from the corners. The mural was moved away from the public
view, which clearly shows that it was prejudicial to the author’s honor or reputation.
Judgment: The Court held that the mural whatever be its form today is too precious to be
reduced to scrap and languish in the warehouse of the Government of India. It is only Mr.
Sehgal who has the right to recreate his work and therefore has the right to receive the
broken down mural. He also has the right to be compensated for the loss of reputation,
honor and mental injury due to the offending acts of UOI".
The Court passed mandatory injunction against the UOI directing it to return the mural to
Mr. Sehgal within two weeks from the date of judgment. Court passed a declaration
transferring all the rights over the mural from UOI to Mr. Sehgal and an absolute right to
recreate the mural and sell the same. The Court also granted damages to the tune of Rs.5
lacs and cost of suit to Mr. Sehgal against UOI.
Conclusion: The Court favored the plaintiff and stated that the defendants are liable to pay
the damages and also to return the mural to its author. The Court also stated that prior
permission should always be taken before taking any such action.

Mannu Bhandari v. Kala Vikas Pictures Pvt. Ltd
(AIR 1987 Del 13)
Keywords: Moral Rights; right of integrity; right of paternity; S. 57; mutilation; distortion;
reputation.
Facts: P (Mannu Bhandari) was the author of novel 'Aap ka Bunty’. She assigned the
filming rights of her movie to the D (Kala Vikas Pictures Pvt. Ltd.). P has filed a case so as
to restrain the screening of the film made by D. In P’s opinion while her novel was a literary
work, the film has been heavily mutilated and commercialised and if released will lower her
reputation of a research scholar in the eyes of public and her admirers as they are likely to
conclude that she has fallen prey to big money in the film world and has consented to such
mutilation and distortions.
Procedural History: The case was first filed in the District court where the learned
Additional District Judge, denied P permanent injunction against the screening of the film as
in his opinion P suffered no loss of reputation. The case was settled by an out of court
settlement between the two parties and the court merely ruled on question of law due to lack
of precedent on power of court and rights of author under Section 57 of the copyright act.
Issues:
1) What is the extent of the powers of the court under Section 57?
2) Whether assignee of a copyright can claim any rights or immunities based on the
contract which is inconsistent with the provisions of Section 57?
3) Whether the movie can be filmed as it is with the changes?
Holding: For the purpose of Section 57, the modification allowed should not be so serious
that the modified form of the work looks quite different work from the original.
 The assignee of a copyright cannot claim any rights or immunities based on a

contract which is inconsistent with the provisions of Section 57.
 Section 57 protests social interest in art and culture and not merely the interest of the
author.
 The court directed to remove the scenes which were too crude, brash and nauseating
and not part of the original movie.
Rationale:
 The Court held that when it passes a judgment under Section 57 it does not sit as a
sentinel of public morals. Accordingly, the court cannot impose its views on the

works of art. The concern of the Court is to merely examine how for the new 'avatar'
is true and authentic and what changes are necessary due to constraints of a medium.
 Section 57 confers additional special rights on the author which can be seen by the
fact that the right exists even after the assignment of the copyright and accordingly a
contract cannot negate the special rights and remedies guaranteed by Section 57.
Rule: In an enquiry under Section 57, the Court does not sit as a super-censor. It's only
function is to see whether there are "mutilations" or "distortions". A contract cannot negate
the special rights conferred upon an author under Section 57 of the Copyright Act.

Zee Telefilms v. Sundial Communications
2003 (5) BomCR 404
Keywords: Idea/ plot/ theme; copyrightable elements; Non-Copyrightable elements;

Substantiality; infringement.
Facts:
 The plaintiff No. 1 is a Company engaged in the business of television programming,

video programming, multi media programming and feature films, television serial
production etc.
 The concepts generated by the Plaintiffs are registered with Film Writers' Association
and the titles for such programs are registered with Indian Motion Pictures Producers'
Association. The concepts generated are expressed through concept notes, character
sketches, detailed plots and episodes, main story lines that are put down in writing.
 They worked on various concepts and came up with a concept titled 'Kanhaiyya' which
was registered with the Film Producers' Association.
 The employees of the plaintiff No. 1 presented the concept under the title 'Kanhaiyya' to
Director - Ideation of defendant No. 1 and other employees of the defendant No. 1.
 The pilot of 'Krish Kanhaiyya alongwith the developed concept was sent to the defendant
No. 1 around 10th October 2002 and was also sent to Star TV, Sony TV and Sahara TV
since the defendant No. 1 had not yet made up their mind as to whether to air and
broadcast the serial 'Krish Kanhaiyya'.
 However, the plaintiffs did not hear from the defendants and they therefore pursued the
production of the show with Sony Entertainment Television.
 Soon after Sony Entertainment Television expressed its willingness to produce this
concept of Kanhaiyya, the plaintiffs learnt that the defendants were doing the show based
on the concept of 'Kanhaiyya'.
 As a result, M/s. Sony Entertainment Television has declined to sign the contract after
coming to know that M/s. Zee Television of the defendants is going to produce and
broadcast serial 'Kanhaiyya'.
Issues:
1) Was there copying of substantial elements of the Plaintiff’s work by the Defendants?
2) Was there a copyright infringement by the defendants?
Holding: Yes, the Defendant’s work was similar to the Plaintiffs’ in material and substantial
aspects. There was a breach of confidentiality as the act of the Defendants affected the goodwill
of the Plaintiffs.
Analysis: The court considered the two works involved in this case with the observations and
impressions of the average viewer. They found striking similarities in the two works which were
not mere chances. Thus, the only inference that can be drawn from the material available on
record is unlawful copying of the plaintiffs' original work. If the concept of Lord Krishna in child

form is removed from the serial of the defendants, the programmes would become meaningless.
In order to find out similarity in the two concepts, what is to be seen is the substance, the
foundation, the kernel and the test as to whether the reproduction is substantial is to see if the rest
can stand without it. If it cannot, then even if many dissimilarities exist in the rest, it would
nonetheless be a substantial reproduction liable to be restrained.
Plaintiff’s ‘Krish Kanhaiyya’ Defendant’s Kanhaiyya
Family is rich and dysfunctional Family is rich and dysfunctional

Main woman protagonist-Step mother, most Main woman protagonist-Dadi maa, most
affected by the environment in the house, affected by the environment in the house,
prays for help to God prays for help to God (Lord Krishna)
The prayer is answered soon by the arrival of The prayer is answered soon by the arrival of
Kanhaiyya Kanhaiyya
God is in Bal Krishna form God is in child form
The interaction with Kanhaiyya is heart- The interaction with Kanhaiyya is heart
warming and consoling and gives some warming and consoling and gives some
support to the main woman protagonist support to the main woman protagonist
Kanhaiyya attaches himself to the seeker of Kanhaiyya attaches himself to the seeker of
help help
Opening background is a flute sound - An Starts with rendition to Lord Krishna
instrument normally thought to be played by
Lord Krishna
Opening title has a prominent peacock The opening title has the peacock feather
feather and the character of Lord Krishna on with the main character's face and Kanhaiyya
it with the title Krish Kanhaiyya written written all across it
across it.
Their music is flute and other instruments Background is from Gita; Implying that it is
Lord Krishna's words.
Reasoning:
a) The concept developed by the plaintiffs is indeed novel, in the sense that Bal Krishna
starts residing in the family whose life is disturbed and solves their troubles. The idea is
developed into an expression, in the sense that concepts are prepared and a pilot was also
prepared which was admittedly submitted to the defendant No. 1.
b) Keeping in view numerous striking similarities in two works and in the light of the
material produced on record, it is impossible to accept that the similarities in two works
were mere coincidence.
c) It is undoubtedly true that the law does not recognize property rights in abstract ideas, nor
is an idea protected by a copyright and it becomes copyright work only wen the idea is
given embodiment in tangible form. When an idea is given embodiment in a tangible

form it becomes subject of common law property rights which are protected by the courts
at least when it can be said to be novel and new. The present case is not a case of a mere
idea.
d) The work of the defendants is similar in material and substantial aspects with hat of the
plaintiffs. The common feature is a dysfunctional family and the fact that the Lord
Krishna enters the life of the family, which has many problems and troubles, solves them
and becomes succor to the family. In the defendants' programmed, the child is called
Kanhaiyya which in India unmistakably points to Lord Krishna. The visual that goes on
prior to the commercial break shows the child with peacock feather, which is again
something unmistakably, associated with Lord Krishna. Moreover, through the episode,
the verses of the Bhagvat Gita are chanted in the background. It is therefore difficult to
accept the dissimilarity relied upon by the defendants such as the fact that the child in
their episode is not 'divine and does not perform miracles' and therefore there is a
complete dissimilarity between the main role in the two concepts.
e) Even the character sketches in both works are similar. In both the father is a businessman
having three children. In 'Krish Kanhaiyya' elder son is a cricketer, the second child is a
budding scientist and does not sleep all night whereas in defendants' serial the second
child who is a computer geed but does not sleep all night and spends too much time on
computer. In 'Krish Kanhaiyya' youngest child is a daughter and talks to people through
her doll whereas in defendants' serial youngest child is also a daughter and talks in third
person.
f) Having considered two works involved in this case not hypercritically and with
meticulous scrutiny but by the observations and impressions of the average viewer, we
find that striking similarities in two works cannot in the light of the material placed on
record be said to constitute mere chance. We feel that the only inference that can be
drawn from the material available on record is unlawful copying of the plaintiffs' original
work.
Rule: In order to find out similarity in the two concepts, what is to be seen is the substance,
the foundation, the kernel and the test as to whether the reproduction is substantial is to see
if the rest can stand without it. If it cannot, then even if many dissimilarities exist in the rest,
it would nonetheless be a substantial reproduction liable to be restrained.
Conclusion : This case was a follow up to the RG Anand case where both the Substantiality test
and the Concept and Feel Test were applied. The only difference between the two cases is that
unlike in RG Anand, in the present case, the dissimilarities do not outweigh the similarities
between both the works. Therefore, there was an infringement of the Plaintiffs copyright.

Perfect 10, Inc v Amazon.com, Inc.
508 F.3d 1146
Keywords: Infringement; Fair Use standards.
Facts: The plaintiff in this case markets and sells copyrighted images of models (nude images).
The website works on a subscription basis whereby the subscribers pay monthly fee to view
these images. To view these images perfect 10 set up a members only area, the members need to
use a password to log into this domain to view them. Further it licenses reduced-size copyrighted
images for download and use on cell phones.
The Defendant Google operates a search engine that automatically accesses thousands of web-
sites on the Internet and indexes them within a database stored on Google’s computers. When a
Google user accesses the Google website and performs a search query, Google’s software
searches its database for websites responsive to that search query. Google then sends relevant
information from its index of web sites to the user's computer. Google’s search engine provides
results in the form of text, images, or videos.
Google Image Search provides search results as a web page of small images called “thumb-
nails,” which are stored in Google’s servers. These thumbnail images are reduced, lower-
resolution versions of full-sized images stored on third-party computers. When a user clicks on a
thumbnail image, Google’s software directs the user’s browser to create on the user’s computer
screen a small rectangular box that contains the Google thumbnail and a larger box that contains
the full-size image, which the user’s computer has been instructed to access from the third-party
site that houses that image (Amazon is one of these third party websites in this case).Though
both the boxes appear to be coming from the same source they are actually coming from google
and a third-party website. This process is called “in-line-linking”. though Google does not store
these images on its server, it stores the content of the webpage in its cache, Google’s cache copy
can provide a browser with valid directions to the infringing im-ages even if the website does not
have those image anymore.
Google also has a business programme called “AdSense” which generates revenue by letting
website owners to register with Google and by placing HTML instructions on its web pages that
signal Google’s server to place advertising on the web pages that is relevant to the web pages’
content. the participants of “AdSense” share the revenues which flow from such advertisings.
Some of the website publishers pirated perfects 10’s copyrighted images and when someone
performs a search query Google automatically directs them to the webpages containing these
infringing images and also provides thumbnail versions of these images to the users. Perfect 10
filed a copyright infringement action against Google, and sought a preliminary injunction to
prevent Google from infringing Perfect 10’s copyright in its images and linking to websites that
provide full-size infringing versions of Perfect 10’s photographs.
Procedural History: The District Court and the Court of Appeals concluded that Google had
infringed Perfect 10’s right of Display. They also held that Google’s in-line linking and framing
of Perfect 10’s full-size images infringed neither Perfect 10’s display rights nor its distribution
rights.
Issues: Whether Google’s use of the Thumbnail images and their process of “in-line-linking” is
infringing Perfect 10’s copyrights on the images and if Google can use the ‘Fair Use’ defence
against this claim?
Analysis: The judges were guided by Kelly v. Arriba Soft Corp. In this case, the plaintiff, a
photographer brought a copyright infringement case against Arriba, the operator of an internet
search engine as the search engine provided thumbnail versions of the photographer’s images in
response to search queries. It was held that there was no copyright infringement.
Fair Use Analysis:
a) Purpose and Character of the use: the court has to consider the purpose and character of
the use and whether such use is of commercial or non-profit educational purposes in
order to determine the extent to of the ‘transformative’ nature of the new work.
To constitute transformative work, the original copyrighted work should be changed and
used in a different context by the defendant. In this case Google's use of thumbnails is
highly transformative as they compile the Thumbnail images with information in a
distinctive manner. Further the court found that Google’s search engine provides social
benefit by transforming the original work perfect 10 into something new and informative
which serves as an electronic reference tool, thereby providing an entirely new use for
the original work. In this case though the entire original work is taken, it serves an
entirely different function than the original, and therefore the use is transformative. The
significantly transformative nature of Google’s search engine, particularly in light of its
public benefit, heavily outweighs Google’s superseding and commercial uses of the
thumbnails with regards to Google’s AdSense.
b) Nature of the copyrighted work: Perfect 10 had already exploited the right to first
publication and had gained commercially; therefore it was not entitled to get protections
that are available for unpublished works.
c) The amount and substantiality of the portion used: The Third factor examines the relation
between the amount and substantiality of the portion used in relation to the copyrighted
work as a whole. The court says Google’s use of the entire photographic image was
reasonable in light of the purpose of a search engine and since using less than the entire
image would defeat the purpose of the search engine to a computer user.

d) Effects of use on the market: this factor assesses the effects of the use upon the potential
market for that things/product or the value of the copyrighted work. Google’s use of
thumbnails did not hurt Perfect 10’s market for full-size images. Since Google’s
thumbnail images were highly transformative, and there was no evidence of market harm
to Perfect 10’s full-size images any potential harm to Perfect 10’s market remains
hypothetical.
Conclusion: Google’s use of Perfect 10’s thumbnails constituted fair use. This is because
Google had put Perfect 10’s thumbnail images to a use fundamentally different than the use
intended by Perfect 10 and therefore provided significant benefit to the public.

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries
AIR 1982 SC 1444
Keywords: Novelty; Prior Art; Utility; Inventive Step.
Facts:
 Hindustan Metal Industries (Plaintiff) is a registered partnership firm carrying on the

business of manufacturing brass and German silver utensils at Mirzapur.
 Biswanath Prasad Radhey Shyam (Defendant) is a concern carrying on the business of
manufacturing dishes and utensils in Mirzapur.
 The old method of manufacturing utensils, particularly shallow dishes, was to turn scrap
and polish them on some sort of headstock without a tailstock, the utensils either being
fixed to the headstock by thermoplastic cement or held in the jaws of a chuck fixed to the
head-stock. This system was, however, fraught with risk to the workers inasmuch as the
utensils used to fly off from the headstock.
 To introduce improvement, convenience speed, safety and better finish plaintiff invented
a device and method for the manufacture of utensils and got the alleged invention
patented under the Indian Patent and Designs Act, 1911.
 The defendant started using plaintiff’s patented method for manufacturing of dishes,
against which the plaintiff filed the case of infringement.
 The defendant filed a counter-claim, praying for revocation of the patent on the grounds
that the alleged invention did not involve any inventive step and has no utility.
Procedural History: High court dismissed the plaintiff’s suit. Plaintiff appeal before the
division bench of the High court. Appellate bench concluded that the method patented did
involve an inventive step, thus, allowed the appeal. Dissatisfied with the holding defendant
appealed to the Supreme Court.
Issue: Whether Plaintiff’s invention does involve an inventive step, regards to what was known
or used prior to the date of the patent and has utility?
Analysis:
 The fundamental principle of Patent Law is that a patent is granted only for an invention
which must be new and useful. It is essential for the validity of a patent that it must be the
inventor's own discovery as opposed to mere verification of what was, already known
before the date of the patent.
 It is important that in order to be patentable an improvement on something known before
or a combination of different matters already known, should be something more than a
mere workshop improvement; and must independently satisfy the test of invention or an

'inventive step'. The improvement or the combination must produce a new result, or a
new article or a better or cheaper article than before.
 The subject of the invention was known for decades for the traditional purpose of
scraping and turning utensils, with a slight change in the mode of application. The
patented invention was not a manner of new manufacture or improvement, nor did it
involve any inventive step having regard to what was known or used prior to the date of
patent. The slight modification in the patented invention would have been obvious to any
skilled worker in the field based on knowledge existing at the date of patent.
Conclusion: The patented machine was neither a manner of new manufacture or novel
improvement, nor did it involve any inventive step, having regard to what was publicly known or
used at the date of the patent.

Diamond v. Chakrabarty
447 U.S. 303 (1980)
Keywords: Gene Patenting; Micro-organisms; Invention; Discovery; Man-made; Products of
nature; manufacture; composition of matter.
Facts: In 1972, respondent Chakrabarty, a microbiologist, filed a patent application for a

genetically engineered bacterium developed by him capable of breaking down multiple
components of crude oil. Due to the properties of the invention it is believed to have a significant
value in the treatment of oil spills. Chakrabarty's patent claims were of three types:
1) Process claims for the method of producing the bacteria.

2) Composition of the slurry of bacteria, its carrier liquids and its application.
3) Claims over the bacteria itself.
The patent examiner (Sydney A.Diamond) allowed the claims falling into the first two categories
but rejected the third claim for patent over the bacteria. His decision rested on two grounds: (1)
that micro-organisms are "products of nature," and (2) that as living things they are not
patentable subject matter under 35 U.S.C. 101.
Issues:
1) Whether genetically engineered bacterium being living things are patentable subject
matter under the statute?
2) Whether respondent's micro-organism constitutes a "manufacture" or "composition of
matter" within the meaning of the statute (Under Title 35 U.S.C , Section101).
Procedural History:
The patent examiner allowed the claims falling into the first two categories, but rejected the third
claim for patent over the bacteria. Chakrabarty appealed the rejection of these claims to the
Patent Office Board of Appeals and the Board affirmed the examiner on the second
ground. The United States Court of Customs and Patent Appeals overturned the case in
Chakrabarty's favour, writing that "the fact that micro-organisms are alive is without legal
significance for purposes of the patent law." Sidney A. Diamond, Commissioner of Patents and
Trademarks, appealed to the Supreme Court.
Law Applicable: Title 35 U.S.C., Section 101, which provides: "Whoever invents or discovers
any new and useful process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title."
Judgment /Ratio Decidendi:

 The Supreme Court (affirmed the decision of The United States Court of Customs and
Patent Appeals) held that a live, human-made micro-organism is patentable subject
matter under Section 101.
 Respondent's micro-organism constitutes a "manufacture" or "composition of matter"
within that statute.
 Court has read the term "manufacture" in Section 101 in accordance with its dictionary
definition to mean "the production of articles for use from raw or prepared materials by
giving to these materials new forms, qualities, properties, or combinations, whether by
hand-labor or by machinery."
 Similarly, "composition of matter" has been construed consistent with its common usage
to include "all compositions of two or more substances and all composite articles,
whether they be the results of chemical union, or of mechanical mixture, or whether they
be gases, fluids, powders or solids."
 The patentee has produced a new bacterium with markedly different characteristics from
any found in nature and one having the potential for significant utility. His invention is
not a discovery but a result of human intervention and research.
 Also, it is a non-naturally occurring manufacture or composition of matter thus making it
a patentable subject matter.
Conclusion: The Committee Reports accompanying the 1952 Act inform us that Congress
intended statutory subject matter to "include anything under the sun that is made by man." This
is not to suggest that Section 101 has no limits or that it embraces every discovery. The laws of
nature, physical phenomena, and abstract ideas have been held not patentable under the U.S.C.
Respondent’s micro-organism qualifies as patentable subject matter as it is not an unknown
natural phenomenon. It is a non-naturally occurring manufacture or composition of matter
marked with different characteristics from any found in nature and one having the potential for
significant utility. His invention is not a discovery or nature's handiwork, but a result of human
ingenuity and research.

Harvard College v. Canada (Commissioner of Patents)
2002 4 S.C.R 45
Keywords: Patent eligible; higher forms of life; manufacture; composition of matter.
Facts: The respondent applied for a patent on an invention titled “transgenic animals” which
they claimed to be suitable for animal carcinogenic studies. They injected oncogene which is a
cancer-promoting gene into fertilized mouse eggs as close as possible to one cell stage which
were further implanted into a female host mouse. They tested for the presence of oncogene upon
the development and delivery of the offspring which are further mated with the ones who are not
genetically altered. This whole process led to a mice (founder mice) genetically altered and
named as oncomouse. This has susceptibility to cancer and hence was a useful means to bring
out a cure for cancer. Respondents claimed patent protection for both the process by which
oncomice are produced and the end product of the process. Patent examiner granted patent only
for the process and not for the product which was further confirmed by the appellant
commissioner.
Issue: Whether higher forms of life are inventions as ‘manufacture’ or ‘composition of matter’
within the meaning of inventions under The Patent Act?
Rule: Section 2 of the present Patent Act (Canadian Law)now provides as follows:
“Invention” means any new and useful art, process, machine, manufacture or composition of
matter, or any new and useful improvement in any art, process, machine, manufacture or
composition of matter.”
Holding: The Court noted that biological inventions were living and self-replicating, incredibly
complex, incapable of full description and contained important characteristics that had nothing to
do with the invention. These issues clearly show that patenting higher life forms raise serious
concerns which are not covered by the scheme of the Patent Act. The Court acknowledged that
the two central objects of the Patent Act were to advance research and development and to
encourage broader economic activity. However, these objects do not imply that “anything under
the sun that is made by man” is patentable. Instead, he found that the language and scheme of the
Act is not well suited to higher life forms and as such he surmised that Parliament did not intend
for patent rights to extend to higher life forms.
Dissent: The decision of the majority was opposed by a strong dissent. Justice Binnie argued that
it is an extraordinary scientific achievement to permanently genetically alter the genes of an
animal where that alteration did not arise in nature. He rationalized that just as other forms of
invention such as moon rockets, antibiotics, telephones, e-mail or hand-held computers, which
would not have been anticipated at the time the Patent Act was drafted, would be considered
inventions, so too should genetic engineering of higher life forms.
Analysis: ‘Manufacture’ (considered in context of the act) is a non-living mechanistic product or
process, and not a higher life form and neither is the composition of matter. While fertilized eggs
are injected and may constitute to be a mixture of ingredients, the oncomouse itself doesn’t
consist of ingredients that have been combined or mixed together by a person, as it is
biologically grown and doesn’t require any human intervention. Further denying the contention
that inventions which precede patent laws are unanticipated and hence should be considered a
patentable subject matter the court said that not all of them to be necessarily patentable as may
be parliament didn’t intend them to be covered under patentable subject matter or they regarded
these to be mere discoveries. Further referring to the Plant breeder’s Rights Act, the court said
that these higher life forms (plants) have been covered under a special legislation specifically for
the rights of plant breeders which demonstrates that higher life forms were never intended by the
parliament to be covered under the Patents act and hence suggested that that until Parliament
creates an applicable legislation it is appropriate to let the patent commissioner forbid this kind
of patent of higher life forms.
Conclusion: Higher life forms are not inventions under the meaning of S.2 of the Patent act as it
does not qualify as a “composition of matter” or a “manufacture” and hence does not meet the
subject matter criteria of the patent act. Hence patent cannot be given to the product oncomouse.

Bilski v. Kappos
561 U.S. 593
Keywords: Patent eligible; Business method; machine or transformation test; abstract test.
Facts: The petitioner’s patent application sought protection for an invention that claimed a
procedure for instructing buyers and sellers how to protect against the risk of price fluctuations
in a discrete section of the economy. It explained how commodities buyers and sellers in the
energy market can protect, or hedge, against the risks of price changes which happen every now
and then. The key claims were claim 1, which described a series of steps instructing how to
hedge risk, and claim 4, which placed the claim 1 concept into a simple mathematical formula.
The remaining claims explained how claims 1 and 4 can be applied to allow energy suppliers and
consumers to minimize the risks resulting from fluctuations in market demand.
Procedural History: The Patent and Trademark Examiner rejected the application on the
grounds that the invention is not implemented on a specific apparatus, merely manipulates an
abstract idea, and solves a purely mathematical problem. The Board of Patent Appeals and
Interferences agreed and affirmed. The United States Court of Appeals of the Federal Circuit, in
turn, affirmed. It produced five different opinions.
Laws Involved: 35 U.S.C. § 101: Whoever invents or discovers any new and useful process,
machine, manufacture or composition of matter, or any new and useful improvement, thereof,
may obtain a patent, therefore, subject to conditions and requirements of titles.
Issue: Whether the petitioner’s invention patentable under the above-mentioned law?
Analysis: The Patent and Trademark Examiner rejected petitioners' application, explaining that
“it is not implemented on a specific apparatus and merely manipulates an abstract idea and
solves a purely mathematical problem without any limitation to a practical application, therefore,
the invention is not directed to the technological arts.”
The Board of Patent Appeals and Inferences affirmed, concluding that the application involved
only mental steps that do not transform physical matter and was directed to an abstract idea.
The United States Court of Appeals for the Federal Circuit heard the case en banc and affirmed.
They reject the prior test for determining whether the invention produced a ‘useful’, ‘concrete
and tangible result.’ They referred to the case of State Street Bank & Trust Co. Ltd. v. Signature
Financial Group Inc., 149 F.3d 1368 and held that a claimed process is patentable if:
 It is tied to a particular machine or apparatus, or

 It transforms a particular article into a different state or thing.

The Court also held that business methods are not patent-ineligible per se, they are patent
ineligible because they describe a method of doing business that is not a process under §101 and,
therefore, rejected the idea that business method patents should be outside the scope of patent
eligibility per se, saying at least some business patent method should be patent eligible.
SC said that the “machine and transformation test” isn’t the sole standard. Thus, so long as the
business method claims otherwise meet the requirements of §§ 102 (invention be novel), 103
(non- obvious), and 112 (fully and particularly described), those claims are patentable. Instead of
applying the “machine-or-transformation” test, the Court simply looked to its precedent in
Benson, Flook, and Diehr case and concluded that Applicants’ claims were drawn to “abstract
ideas” and thus not patentable.
Conclusion: Therefore, concluding that this machine or transformation test is the sole test for
determining patent eligibility of a process under §101, the Court applied the test and held the
application wasn’t patent eligible.

NOTE: Pre-amendment case.
Dimminaco A.G v. Controller of Patents and Designs & Others
(2002) I.P.L.R. 255 (Cal)
Keywords: Patent eligible; micro-organisms; invention; discovery.
Facts and Procedural History:
 The Appellant, Dimminaco A.G, filed for a patent application for an invention relating to
a process for preparation of the bursitis vaccine. The vaccine was useful for protecting
the poultry against the contagious bursitis infection. However, the process to prepare the
vaccine contained a living virus in the end product.
 The patent application filed by Dimminaco A.G. was examined by the Patent Officer
Examiner under Section 12 of the Patent Act, 1970. On such examination, the Examiner
gave a finding that the said Patent Application did not constitute an invention under
Section 2 (j) (i) of the Patent Act, 1970.
 Dimminaco A.G. further appealed against this rejection to the Controller of Patents &
Designs.
 Acting under delegated authority by the Controller, the Assistant Controller of Patents
and Designs too refused to accept the Patent Application and upheld the objection.
 Hence, the appellants approached the Calcutta High Court with this appeal.
Issues:
1) Is there a statutory bar to accept a manner of manufacture as patentable if the end product
contains a living organism?
2) Will a process of preparing a vaccine that contains a live virus be considered to be
‘methods or process of manufacture’ under the Patent Act, 1970? If yes, will it be
construed to be an invention as under Section 2 (j)(i) of the Patent Act, 1970?
Rule and Law Applicable: Section 2 (j)(i) of the Patent Act, 1970 stated – “(j) ‘Invention’
would mean any new and useful –
i. Art, process, method or manner of manufacture;

ii. Machine, apparatus or other articles;
iii. Substance produced by manufacture and includes any new and useful
improvement of any of them and an alleged invention;”
Section 5 of the Patent Act, 1970 stated – “Inventions where only methods or process of
manufacture patentable –

1) In the case of inventions –
a) Claiming substances intended for use, or capable of being used, as food or as
medicine or drug, or
b) relating to substances prepared or produced by chemical process (including
alloys, optical glass, semi-conductors and intermetallic compounds),
No patent shall be granted in respect of claims for substances themselves, but claims for the
methods or processes of manufacture shall be patentable.
2) Notwithstanding anything contained in sub-section (1), a claim for patent of an invention

for a substance itself intended for use, or capable of being used, as a medicine or drug
may be made and shall be dealt, without prejudice to the other provisions of this Act, in
the manner provided in Chapter IV-A.”
Analysis:
 The Court held that there is no statutory bar to accept a manner of manufacture to be
patentable if the end product contains a living organism. In this case, the process claimed
in the patent application was a new and novel process for the preparation of vaccine that
involved chemical steps under specific scientific conditions. Therefore, the Court held
that it was a new process and was patentable under Section 5 of the Patent Act. In other
words, since the end product was a new article, the process leading to its manufacture
was held to an invention, and thus patentable.
 To decide whether in a particular case, the process of manufacture that is involved in the
invention ought to be patented or not, the vendibility test can be used.
 A vendible product is one that can be passed on from one man to another upon the
transactions of purchase and sale. Therefore, the vendibility test is satisfied if:
 the invention results in the production of some vendible product; or
 if it improves/restores former conditions of a vendible product; or
 if its effect is the preservation and prevention from deterioration of some vendible
product.
 Since ‘manner of manufacture’ is not defined in the statute, the dictionary meaning of the
word has to be used. The Court held that the dictionary meaning of the word
‘manufacture’ includes the process of preparing a vendible commodity which contains a
living organism.
 The Court also rejected the Patent Office’s understanding of the lyophilizing. It held that
the as a result of the process of lyophilizing, nothing is killed or destroyed – the
biological activity of the material is retained and not wasted. Therefore, as a matter of
practice, patents had been granted by various Patent Offices, to processes that involved
living organisms.

Conclusion and Ratio Decidendi:
 There is no statutory bar to accept a manner of manufacture as patentable if the end

product contains a living organism.
 Since the claim process for patent, that is, the bursitis vaccine, led to a vendible product,
it was certainly a substance after going through the process of manufacture. Therefore,
the process was an invention, and thus patentable.

Novartis v. Union Of India
(SC Civil Appeal No. 2706-2761 of 2013)
Keywords: Pharmaceutical patents; Prior Art; Publication; Disclosure; S.3(d); Efficacy; Ever
greening.
Facts: In this case, sequence of events with prior art are as follows:
 The Zimmerman patent in ’93, which disclosed the imatinib free base – this patent was
not granted in India because India did not provide for pharmaceutical patents prior to
1995;
 A publication in 1996, which referenced imatinib mesylate;
 The 1998 patent application before the Indian Patent Office, which claimed the beta-
crystalline form of imatinib mesylate.
Novartis filed for patent of its “Beta Crystalline” form of “Imatinib Mesylate” in 1998 as per the
TRIPS agreement of WTO. The application was processed in 2005 and was rejected in 2006 on
the grounds that it failed to satisfy the requirement of novelty and non-obviousness as per the
amended Indian Patent Act. Novartis appealed against the decision in Madras High Court that
was then transferred to the IP Appellate Board. The IP Appellate board rejected the application
on the grounds that the invention was not a new substance but an amended form of a known
substance and that Novartis was unable to show the increase in efficacy as laid down in section
3(d) of the Indian Patent Act.
Novartis appealed before the Madras High Court that Section 3(d) violated Article 14 of the
Constitution as the requirement of ‘enhanced efficacy’ under section 3(d) was vague and gave
unrestricted power to the patent examiner. The High Court rejected the application and held that
the object of section 3(d) was to prevent intellectual monopoly privileges and evergreening of
patents.
Appealed to the Supreme Court
Issues:
1) What is the ‘Known Substance’ for the purpose of section 3(d)?

2) What is the meaning of ‘efficacy’ in section 3(d)?
3) Does an increase in bioavailability qualify as increase in therapeutic efficacy under
Section 3(d)?
4) Was the claimed invention by Novartis more efficacious than the substance that it was
derived from?

Analysis:
1) After the 2005 amendment, Section 3(d) required the claimed invention to be more
efficacious than the ‘known substance’ from which the claimed invention was derived. In
this case, Novartis was keen to have ‘Imatinib Free Base’ to be identified as he ‘known
substance’ instead of ‘Imatinib Mesylate’ since it would be easier to prove greater
efficacy in comparison to Imatinib Free Base. Supreme Court shot down this argument on
the grounds that “Imatinib Mesylate” was anticipated by prior art (publication in 1996)
and existed before the claimed invention hence it was a known substance.
Therefore, Imatinib Mesylate was presumed to be the known substance in this case.
2) While Novartis was arguing for a broader interpretation of ‘efficacy’ in Section 3(d)
which would include other beneficial properties such as increased stability, etc., Supreme
Court made it crystal clear that ‘efficacy’ in Section 3(d) only means therapeutic efficacy.
The court held that “not all advantageous or beneficial properties are relevant, but only
such properties that directly relate to efficacy, which in case of medicine, is its
therapeutic efficacy.
3) Bioavailability is the increased ability of the drug to dissolve into the bloodstream of the
patient. The Supreme Court on this issue ruled that such an increase of 30% in
bioavailability can qualify for protection under 3(d) if evidence is provided to establish
that such an increase leads to greater therapeutic efficacy.
4) The Court compared the efficacy of the claimed invention with the known substance
(Imatinib Mesylate) with reference to its flow properties, better thermodynamic stability
and lower hygroscopicity and concluded that none of the three properties identified will
qualify under section 3(d) as it doesn’t contribute to an increased therapeutic efficacy.
Conclusion: The Supreme Court rejected the appeal filed by Novartis and concluded that since
there was no substantive & conclusive material and evidence to prove that beta crystalline form
of Imatinib Mesylate will produce an enhanced or superior therapeutic efficacy, therefore failed
to meet the requirements under section 3(d).

Association for Molecular Pathology v. Myriad Genetics, Inc.
Keywords: Human Gene patents; Invention; Discovery; Patent eligible.
Facts: Myriad Laboratories discovered the existence of genes BRCA 1 and BRCA 2 on the
Human Chromosomes, the mutations of which can cause breast cancer, amongst approximately
15 million genes in the human genome. In addition, it synthesized a gene called the BRCA
cDNA, which is a synthetic product that mirrors the coding sections of the BRCA genes, and
"primers" used in diagnostics gene and applied for a composition patent on it. Myriad’s patents
would, if valid, give it the exclusive right to isolate an individual’s BRCA1 and BRCA2 genes
(or any strand of 15 or more nucleotides within the genes) by breaking the covalent bonds that
connect the DNA to the rest of the individual’s genome. The patents would also give Myriad the
exclusive right to synthetically create BRCA cDNA. In Myriad’s view, manipulating BRCA
DNA in either of these fashions triggers its “right to exclude others from making” its patented
composition of matter under the Patent Act.
Issues:
1) Whether Myriad’s claimed invention BRCA 1 and BRCA 2 and BRCA cDNA, the
sequence of certain human genes in both isolated and purified forms, falls within the
scope of inventions for which a patent may be granted.
2) Whether the product patents obtained by Myriad Laboratories on the discovery of genes,
BRCA 1 and BRCA 2 and BRCA cDNA, on the human genome valid under the
provisions of 35 U. S. C. §101 and in consonance with the relevant jurisprudence on the
matter.
Rule: 35 U. S. C. §101: “Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and requirements of this title.”
Analysis: The Supreme Court considered the argument made by both the sides and held that, “A
naturally occurring DNA segment is a product of nature and not patent eligible merely because it
has been isolated, but cDNA is patent eligible because it is not naturally occurring”. So, the
discovery by Myriad Laboratories, of the position of BRCA 1 and BRCA 2 genes was not patent
eligible under the provisions of 35 U. S. C. §101. Although the section makes patents eligible for
a new composition of matter, but “laws of nature, natural phenomena, and abstract ideas” ‘are
basic tools of scientific and technological work’ ” that lie beyond the domain of patent
protection, and hence these naturally occurring genes were not patent eligible under the provision
of the law.
Myriads discoveries falls within the law of nature exception. The primary work of the plaintiff
was to discover the alrady exisitng location of the genes BRCA 1 and BRCA 2. Mere discoveries
cannot be made patent eligible eventhough there are ground breaking discoveries. . Finding the
location of the BRCA1 and BRCA2 genes does not render the genes patent eligible “new . . .
composition[s] of matter,” §101. Myriad’s patent descriptions highlight the problem with its
claims: They detail the extensive process of discovery, but extensive effort alone is insufficient
to satisfy §101’s demands
However, the court agreed to grant patent to the composition of cDNA because, it was clear that
this was not a “product of nature”, in the sense that it did not exist in nature, Its creation results
in an exons-only molecule, which is not naturally occurring. Its order of the exons may be
dictated by nature, Human intellect and skill had to involved to produce this matter in the
laboratory. Its order of the exons may be dictated by nature, but the lab technician
unquestionably creates something new when introns are removed from a DNA sequence to make
cDNA.
The court differentiated this case from the Diamond. The case in diamond was that the plaintiff
had created a living organism by changing the strains in it through a laboratory process and
hence, it was not naturally occuring and patent eligible. Whereas in the present, with the
exception of cDNA, the others were naturally occurring and the plaintiff did not have to put in
any work, intellectual and skill, in the production of the DNA.

Alice Corporation Pvt. Ltd. v. CLS Bank International
134 S. Ct. 2347
Keywords: Patent eligible; computer programme; exceptions to patent eligibility.
Facts: Alice Corporation was the assignee of several patents that contain a scheme for mitigating
“settlement risk”. This risk means that only one party to a financial exchange will satisfy its
obligation. The computer acts as a third party in this transaction. The computer creates shadow
debit and credit records for each stakeholder party. It obtains a start of the day balance and only
allows for transactions according to the amount available as shown on the shadow records. In
this way, it mitigates settlement risk by only allowing for transactions which both party have
funds for.
Issues: Alice Corporation, as assignee of several patents, seeks infringement on three grounds:
1) Methods Claims (the foregoing method for exchanging obligations).

2) System Claims (a computer system configured to carry out the method for exchanging
obligations)
3) The media claims (a computer readable medium containing program code for performing
the method of exchanging obligations).
Or
Whether the claims were patent eligible under 35 U.S.C.S. § 101, or were instead drawn to a
patent ineligible abstract idea?
Procedural History: CLS bank filed a suit against Alice Corporation, arguing that the patent
claims at issue are unenforceable and invalid. Alice Corporation counterclaims, stating that CLS
bank had infringed those copyrights. The district court affirmed that the patents were ineligible
because they were related to an abstract idea. The United States Court of Appeals reversed it
stating that it is not evident that the patent is tied to an abstract idea. The en blanc federal Court
affirmed the decision of the District Court.
Laws involved: 35 U.S.C. § 101- "Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions and requirements of this title."
Analysis: The Court held that the patents are ineligible and then discusses the first claim of
method claims. The Court begins by stating that there are three exceptions to patent protection
which is Laws of Nature, Natural Phenomena and abstract ideas. These cannot be patented. This
is an implicit exception to Section 101 which provides for patent protection.

The Court then derives the framework to decide how to reach the conclusion if anything falls
within the exception by using Mayo Services v. Prometheus Laboratory. First, the patentable
concept has to be directed to one of the three patent ineligible concepts. Second, it is necessary to
check if anything has been added to the concept. The second step is to search for an “inventive
concept” to see if the concept has transformed the patent ineligible idea into something that can
be protected.
In the first step, the claims at issue are directed to the patent ineligible concept of an “abstract
idea”. The court used Parker v. Flook, which stated that a mathematical formula for computing
alarm limits in a catalytic conversion process was an abstract idea. In Bilski v. Kappos, the
claims at issue related to hedging which is an abstract idea and cannot be patented. The courts
agreed that hedging was a fundamental economic practice and long prevalent in the system of
commerce and finance. Drawing from this, the court held that using a third party intermediary,
like the concept of hedging, is a fundamental economic practice and has long been used in
commerce. They discuss the use of “clearing house” as an intermediary to reduce such risk and
use literature to substantiate. The Petitioners argued that abstract idea have to be “pre-existing
fundamental truth that exist in apart from human action” but the court dismissed this stating no
such requirement is necessary.
The Court then stated that the patent failed to transform the concept into something patentable,
thereby failing the second step of “inventive concept”. The Court again uses the Mayo Case to
further its analysis. It states that additional features are required to transform the concept and
simply adding conventional steps, which are highly generic, is not enough to be inventive. In the
Flook case, the use of a computer for automatic alarm controlling was highly conventional and
did not add to the abstract idea. Thus, limiting the use to a particular technological environment
is not enough. In contrast, the Diehr Case 450 U.S. 175, which required the use of a computer for
curing rubber was considered to be patent eligible. This was not because it used a computer but
because the use of a thermocouple to record temperature measurements was not available
beforehand. This improved an existing technological process and not just because a computer
was used. In this case, the use of a computer is conventional as this is mere electronic book-
keeping. All these uses of obtaining data, adjusting balances are conventional uses of a
computer. They do not add anything significant and merely apply an abstract idea of
intermediated settlement using a generic computer.
The Petitioners concede that the third claim (media) rises or falls with the first claim (method).
The court does not look into it. Whereas the second claim, system claim, is concerned the court
says it is similar to the first claim of media claim. The specific hardware is concerned, for
example a data storage unit, are generic.
Thus, the Court affirms the decision of the federal Court.

Rule: While applying the §101 exception, it is important to distinguish between patents that
claim the 'building blocks’ of human ingenuity and those that integrate the building blocks into
something more, thereby "transforming" them into a patent-eligible invention. The former
"would risk disproportionately tying up the use of the underlying" ideas and are therefore
ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore
remain eligible for the monopoly granted under our patent laws.
First, the courts determine whether the claims at issue are directed to one of those patent-
ineligible concepts. If so, then the courts ask, "what else is there in the claims before us?" To
answer that question, we consider the elements of each claim both individually and "as an
ordered (as in, step-wise) combination" to determine whether the additional elements "transform
the nature of the claim" into a patent-eligible application. This step two of this analysis is a
search for an "'inventive concept'"i. e., an element ‘or combination of elements that is
"sufficient” to ensure that the patent in practice amounts to significantly more” than a patent
upon the ineligible concept itself.
Holding: The claims at issue are drawn to the abstract idea of intermediated settlement, and that
merely requiring generic computer implementation fails to transform that abstract idea into a
patent eligible invention.
Specifically, the concept of intermediated settlement was a fundamental economic practice, and
the use of a third party intermediary was a building block of the modern economy. The method
claims, which merely required generic computer implementation, failed to transform the abstract
idea into a patent eligible invention. The computer components of the patent's method added
nothing that was not already present when the steps were considered separately. The assignee's
claims to a computer system and a computer readable medium failed for substantially the same
reasons.

University of Utah Research v. Ambry Genetics
Corp. 3 F. Supp. 3d 1213
Keywords: Gene Patenting; Discovery; Myriad; Patent ineligible matter; natural
phenomenon; abstract ideas.
Facts: The plaintiffs are the University of Utah Research Foundation, The Trustees of the
University of Pennsylvania, HSC Research and Development Limited Partnership,
Endorecherche, Inc., and Myriad Genetics, proclaimed encroachment of three of their patents.
The University of Utah is the co-owner of three of the patents issued Patents. The patents cover
the BRCA1 and the BRCA2 genes.
The respondents, Ambry Genetics are a clinical diagnostic and genomic services company, they
offer medical tests which claim to possibly detect genes that show breast and ovarian cancer
related risks.
Procedural History: Myriad appealed from a decision of the District Court for the District of
Utah denying Myriad’s motion for preliminary injunction, which was requested with a view to
stop Ambry’s sale of the cancer test kits. The District Court denied the said Preliminary
injunction because it stated that the subject matter in question was patent ineligible.
Issue: Whether the subject matter is patent eligible and therefore, whether Plaintiffs can prevent
Ambry Genetics from selling the kits on the basis of infringement of patent?
Reasoning and Judgment: In the case Association for Molecular Pathology v. Myriad
Genetics (2013), it was established that Myriad and its partners discovered the precise locations
and sequences of the BRCA1 and BRCA2 genes, mutations of which are linked to hereditary
breast and ovarian cancers. The Supreme Court held that "genes and the information they encode
are not patent eligible simply because they have been isolated from the surrounding genetic
material." The court stated that the subject matter is ineligible because they are isolated DNA
strands, which are naturally occurring and distinguished from the rest of the human genome, and
thus, are natural phenomena.
Primers do not alter the underlying, naturally occurring DNA sequence that is being read.
Therefore, they do not alter the underlying DNA's functional properties or identity for the
purposes of genetic testing. The primers in question in this case were not found to be very
different from the isolated DNA fount to be patent ineligible in the Association for Molecular
Pathology v. Myriad Genetics case.
In the present case, the Court first observed that Myriad did not "create or alter": 1) "any of the
genetic information encoded in the BRCA1 and BRCA2 genes," as the "location and order of the
nucleotides existed in nature before Myriad found them". Hence, the Court held that the subject
matter in question is patent ineligible because it is not ‘inventive’ in nature. Thus, all the
asserted claims were held to be patent-ineligible.

In regards to the methods claims, the Court cited Mayo Collaborative Services v. Prometheus
Laboratories Inc. case, ‘a that a process focusing on a law of nature, natural phenomenon, or an
abstract idea may be patent eligible, but only if it incorporates another "inventive concept"’. In
the present case, the Court held that the method claims were ineligible – because they
encompassed the detection of any BRCA1/BRCA2 mutation for any purpose did not recite
significantly more than a patent-ineligible “abstract idea’. The two method claims involved
comparisons between the wild-type BRCA sequences with the patient’s BRCA sequences. The
court reasoned that these method claims were ineligible because “the only ‘inventive concepts’
in the method claims are the patent ineligible naturally occurring BRCA1 and BRCA2 sequences
themselves.”
The Court also cited the case Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014), laws
of nature are not the only implicit exception to patentable subject matter identified by 35 U.S.C.
§ 101. Natural phenomena and abstract ideas are also not patentable.
Conclusion: The claims on appeal are directed to ineligible subject matter in violation of 35
U.S.C. § 101. Therefore, the district court properly denied Myriad’s motion for preliminary
injunction. We remand to the district court for an entry of an order consistent with this opinion;
Affirmed and remanded.

Bayer Corporation vs. Union of India
2013 Indlaw IP AB 20
Keywords: Compulsory License
Facts: The petitioner (Bayer) is a corporation incorporated under the laws of United State of
America (U.S.A.). Subsequent to its research and development (R & D) activities, the petitioner
invented and developed its patented drug to enable its administration to human beings. The
patented drug is used in the treatment of patients suffering from Kidney cancer i.e. Renal Cell
Carcinoma (RCC) and liver cancer i.e. Hepatocellular Carcinoma (HCC). The aforesaid patented
drug acts more as a palliative i.e. relieves patients from pain and to an extent also slows down the
spread of cancer by restricting the speed with which the cancer cells grow. • Bayer Corp.
had acquired the patent for the salt/compound Sorafenib Tosylate in 2008 in India. The market
name of the medicine/drug was Nexavar.
Natco, a drug manufacturer in India, approached the petitioner for grant of voluntary license for
the purpose of manufacturing and selling the patented drug in India. The respondent (Natco)
sought a voluntary license to manufacture and sell in India the patented drug under its brand
name at a price of less than Rs. 10,000 per month of therapy as against the price of Rs. 2,80,428
per month of therapy charged by the petitioner. The purpose behind obtaining the voluntary
licence by Natco was to make the patented drug accessible to the public at an affordable price.
When applying for the voluntary license, Natco also stated the fact that the petitioner had neither
met the reasonable requirement of public nor was it reasonably priced nor had it worked in the
territory of India. Eventually, the petitioner rejected Natco's application for grant of voluntary
license.
Thereafter, on 29 July, 2011 i.e. after the expiry of three years from 3 March, 2008, Natco
applied to the Controller for a grant of Compulsory License under Section 84 (1) of the Act. In
its application, Natco pointed out that all the three conditions for the grant of Compulsory
License were fulfilled/satisfied. It was also set down that they proposed to sell the patented drug
under their brand name (Nexavar) at Rs. 8,800 per month of therapy. On 9 March, 2012 the
Controller via his order gave authorization to Natco to manufacture and sell the patented drug
and directed to pay to the petitioner royalty at 6% of its net sales of the patented drug under its
brand name which was allowed to be sold at the price of Rs. 8,800 for 120 tablets for a month of
treatment. Besides, the grant of Compulsory License to Natco was non-exclusive, non-assignable
and for the balance term of the patent.
Issue: Whether a compulsory license can be granted in favour of Natco for the production of the
patented drug?

Law Involved: What is a compulsory License?
Section 84(1) of the Patents Act allows any interested person to make an application to the
Controller for the grant of Compulsory License after the expiry of three years from the date of
grant of patent on any of the following grounds:
a) That the reasonable requirements of public with respect to the patented invention have
not been satisfied
b) That the patented invention is not available to the public at reasonably affordable price
c) That the patented invention is not worked in India.
Discussion/Rationale:
a) Did the applicant (Natco) make efforts to obtain voluntary licence from the patent holder
(Bayer)?
The first condition precedent to consider an application for compulsory license is that
three years should have elapsed from the grant of the patent. The petitioner urges that the
second condition precedent to entertain the application viz making efforts to obtain
voluntary license from the patent holder on reasonable terms and conditions as mandated
by Section 84 (6) of the Act has not been satisfied i.e. the applicant has not made efforts.
On the basis of examination of evidence i.e. exchange of letters between the parties in the
context of Section 84 (6) of the Act, both the authorities concluded that effort was made
by Natco to obtain the voluntary license. The Court said that it found no reason to
interfere with the findings of the authorities under the Act and held that the second
condition precedent for consideration of application for compulsory license namely an
effort to obtain a voluntary license has been satisfied by Natco.
b) Have the reasonable requirements of the public been satisfied?
The Court held that in the scheme of the Act it for the applicant while filing an
application for Compulsory License in terms of Section 87 of the Act to make out a prima
facie case that one or all the grounds stated in Section 84 (1) of the Act are prima facie
attracted/applicable in respect of a patent for which the Compulsory License is sought.
The petitioner then submitted that the reasonable requirement of the public has to be
considered by the authorities in the context of number of patients requiring the patented
drug. It is submitted by the petitioner that it is not in every case that a person suffering
from HCC or RCC Cancer is required to be administered the patented drug. The occasion
to administer the patented drug arises only during the last stages of a patient's illness and
even in that case the Doctor may opt for a line of treatment requiring measures other than
the intake of the patented drug. The Court held that the aforesaid exercise can never be
carried out on a mathematical basis. It has to be on a broad basis and this broad exercise
has been done on the basis of the evidence produced by the parties. In fact, authorities

under the Act have considered the rival statistics of the patients before it and on that basis
determined the reasonable requirement of the public.
c) Whether the supplies by infringers of the patented drug is to be considered/taken into
account to determine the satisfaction of the reasonable requirement test?
It was contended by the petitioner that while determining the satisfaction of the
reasonable requirement of the public for the patented drug, the supplies made by the
infringers i.e. Cipla have to be taken into account. The authorities have held that the
supplies by infringers of the patented drug cannot be taken into account as the supply of
the patented drug by the infringer is uncertain. The Court noticed from the record that the
petitioner had filed an infringement suit against the infringer viz Cipla. It was the
petitioner's contention before the Court that the suit filed before the Delhi High Court
against Cipla, the alleged infringer for injunction should be ignored as no injunction has
yet been granted. The Court declined to accept this argument as an injunction could be
granted at any time as the suit continues to be pending. Therefore, the infringer's quantity
of goods cannot be taken into account only because it could stop on any day. It is only
where the patent holder accepts the infringer's participation in the market and in fact
grants him defacto licence could the infringer's supplies be taken into account.
The meaning to be given to the words “adequate extent”.
Section 84 (7) of the Act provides a deeming fiction which deems that reasonable
requirement of the public is not satisfied if the demand for patented article is not met to
an adequate extent. The aspect of adequate extent would vary from article to article. So
far as luxury articles are concerned, the meeting of adequate extent test would be
completely different from the meeting of adequate extent test so far as medicines are
concerned. In respect of medicines, the adequate extent test has to be 100% i.e. to the
fullest extent. Medicine has to be made available to every patient and this cannot be
deprived/scarified at the altar of rights of patent holder.
d) Was the patented drug available to the general public at a reasonably affordable price?
It is mandated by Section 90 (1) (iii) of the Act that the Controller should ensure that the
patented drug is available at reasonably affordable price. This reasonably affordable price
has to be determined on the basis of the relative price being offered by the patent holder
and the applicant. In the present case, the price at which the petitioner is selling the
patented drug is at about Rs. 2,84,000 per month of therapy and the applicant was
offering the same at Rs. 8,800 per month of therapy. Noticably, the petitioner’s price of
sale did not look reasonable.
The petitioner asserts that the price of the patented drug is to be arrived at taking into
account not only the research and development costs for the patented drug but also the
costs incurred in respect of research and development on failed drugs thereby making the
price at which it is selling the patented drug a reasonably affordable price. Before the
Controller, the petitioner had protested at the calling for the Balance Sheet. The figures

enclosed therein would establish the total costs incurred by the petitioner on research and
development of the patented drug which could have formed the basis to decide the
reasonable price at which the petitioner could make the drug available to the public in
India. Hence, no fault can be found with the impugned order holding that the patented
drug is not available to the public at a reasonably affordable price.
e) Has the patented drug been working in the territory of India?
The petitioner submits that the patented drug had worked in the territory of India by
importation of the same. Article 27 of the TRIPS agreement inter alia provides that there
would be no discrimination in respect of patented product whether legally manufactured
or imported. In Form 27, the patent holder while giving details of patented drug in India,
has to make a declaration of the patented product having worked in India under two
classifications namely manufacture in India and imported from other countries. The
petitioner maintains that there is no requirement in the Act that for the purpose of
patented drug being worked in the territory of India, it should necessarily be
manufactured in India. The Union of India alleges to the contrary.
The Court looked through the prism of Section 83 of the Act which contains the
legislative guidelines to govern the meaning of the words 'worked in the territory of
India'. The guidelines pronounce that the patent is not conferred upon the patent holder so
as to enable him to enjoy a monopoly with respect to the importation of the patented
article. On that account, it is safe to presuppose that some efforts to manufacture in India
should also be made by the patent holder. Section 83 (f) of the Act provides that patent
holder should not abuse his patent so as to inter alia adversely affect international trade. It
would, therefore, follow that when a patent holder is faced with an application for
Compulsory License, it is for the patent holder to show that the patented invention/drug
has worked in the territory of India by manufacture or otherwise. Where a patent holder
satisfies the authorities, the reason why the patented invention could not be manufactured
in India then the patented invention can be considered as having been worked in the
territory in India even by import.
f) Whether the application for compulsory license ought to have been adjourned by the
Controller?
It was contended that in any view of the matter the Controller ought to have adjourned
the consideration of the application for compulsory licence filed by Natco. This would
have given petitioner time to work the patented drug on commercial scale in India. The
Court found no merit in the aforesaid submission. Two conditions must be satisfied so as
to adjourn the application for a compulsory license:
 The time which has lapsed since the patent was granted and when an application
for compulsory license was made was insufficient to enable the patent holder to
work the patented drug in India on a commercial scale; and

 Patent holder should have taken steps towards working the patented drug in India
on a commercial scale with promptitude. The petitioner was granted the patent in
India in 2008. The petitioner also has manufacturing facilities available in India.
The petitioner has led no evidence before the authorities to indicate what steps
they have taken and with what promptitude the same have been taken for the
purposes of working the patent in India after 2008.
In these circumstances, the Court found no fault with the order of the Controller refusing to
adjourn the application for compulsory license.
Holding: The Court saw no reason to interfere with the orders dated 9 March, 2012 and 4
March, 2013 of the Controller and the Tribunal respectively granting compulsory license under
Section 84 of the Patent Act to Natco. Accordingly, the petition was dismissed. Petitioner must
be paid royalty raised from 6% to 7% of the net sale of Natco as remuneration for the
compulsory license granted to Natco. This royalty was fixed keeping in view the fact that the
petitioner had led no evidence to show the expenses incurred by it to invent the patented drug.

Graver Tank & Mfg. Co. v. Linde Air Products Co. (Graver Tank II)
339 U.S. 605 (1950)
Keywords: Doctrine of Equivalence; Prior Art; Claims; Non-literal infringement; Construction

of claims.
Facts:
 There are two electric wielding compositions or fluxes: the patented composition
(Unionmelt Grade 20) and the accused composition (Lincolnweld 660).
 The patent under which Unionmelt has made a claim is essentially a combination of
alkaline earth metal silicate and calcium fluoride (silicates of calcium and magnesium)
 Licolnweld’s composition is similar to Unionmelt’s, except that it substitutes silicates of
calcium and manganese-the latter not an alkaline earth metal – for silicates of calcium
and magnesium. In all other respects, the two compositions are alike.
 The mechanical methods in which these compositions are employed are similar. They are
identical in operation and produce the same kind and quality of weld.
Procedural History:
 The plaintiff (Linde Air Products Co.) owned a patent for an electronic welding process,
and sued defendants including the Graver Company for infringing the patent.
 The defendants asserted that they were not infringing the patent because the patented
welding process used a welding composition made of alkaline earth metal silicate and
calcium fluoride (usually expressed as silicates of calcium and magnesium), while the
purported infringers substituted a similar element, manganese, for the patentee's
magnesium. -The United States district court found infringement, and the Court of
Appeals affirmed the infringement claim.
Issue: Whether the substitution of the manganese, which is not an alkaline earth metal, for
magnesium, which is, under the circumstances of this case, and in view of the technology and
and the prior art, is a change of such substance as to make the doctrine of equivalents
inapplicable; or, conversely whether, under the circumstances, the change was so insubstantial
that the trial court’s invocation of doctrine of equivalents was justified?
Holding:
 Court raised the doctrine of equivalents. It noted that if another party could use a process
exactly the same as one that is patented, but escape infringement by making some
obvious substitution of materials, it would deprive the patentee of the exclusive control
meant to come with a patent. This would undermine the profitability of the patent, which

would go against the policy of encouraging inventors to invent by giving the opportunity
to profit from the labor of invention.
 Court also outlined how the doctrine should be used, noting that "what constitutes
equivalency must be determined against the context of the patent, the prior art, and the
particular circumstances of the case."
Rationale: Court laid out two possible tests to determine equivalency. Under the first of these
("triple identity" test), something is deemed equivalent if:
- It performs substantially the same function

- in substantially the same way
- to yield substantially the same result.
Under the second test, something is deemed equivalent if there is only an "insubstantial change"
between each of the features of the accused device or process and the patent claim.
In this case, the Court gave particular weight to the determination of "whether persons
reasonably skilled in the art would have known of the interchangeability of an ingredient not
contained in the patent with one that was." Finding that the substitution of magnesium for
manganese was both obvious to anyone working in the field, and was an insubstantial change,
the Court upheld the finding of patent infringement.
In the current case, disclosures of prior art made it clear that manganese silicate was a useful
ingredient in welding compositions. Also specialists familiar with the problems of welding
compositions understood that manganese was equivalent to, and could be substituted for
magnesium in the composition of the patented flux and their observations were confirmed by the
literature of chemistry. Hence the substitution in the accused composition of manganese silicate
for magnesium silicate, where the two compositions were substantially identical in operation and
result was so insubstantial in view of technology and prior art, that the patent was infringed
under the doctrine of equivalents.
Rule: Doctrine of Equivalence.

Kirin-Amgen Inc v. Hoechst Marion Roussel Limited
[2004] UKHL 46
Keywords: Non-literal infringement; Equivalents; Doctrine of Purposive construction;

Construction of claims.
Facts:
 Kirin Amgen Inc a pharmaceutical company, invented a process of producing

erythropoietin (EPO) by recombinant DNA technology and for its invention it was
granted a European Patent (EP0148605B2). Amgen’s invention of EPO was an advance
in the treatment of anaemia and marketed the EPO under the name of Epogen.
 Transkaryotic Therapies Inc (TKT) another corporation also developed a method of
making EPO, and markets it under the name Dynepo. It uses a process called gene
activation and the product was named as GA-EPO. Thus it used a different method as
compared to that of Amgen. Hoechst Marion Roussel Ltd ("Hoechst") another
pharmaceutical company proposed to import GA-EPO into the United Kingdom.
 The essential difference between both the drugs namely Epogen and GA-EPO is that the
former is made by an exogenous DNA sequence coding for EPO which has been
introduced into an host cell and the latter is made by an endogenous DNA sequence
coding for EPO in a human cell into which an exogenous upstream control sequence has
been inserted.
Procedural History: Amgen’s claims were the following:
(1) DNA sequence for use in securing the expression of EPO in a host cell,
(19) EPO which is characterized by being the product of eucaryotic expression of an exogenous
DNA sequence with further characteristics that made it different from pre-existing EPO, and
(26) EPO, which is the product of the expression in a host cell of a DNA, sequence according to
claim 1.
The trial judge held that claim 19 was invalid for insufficiency but that claim 26 was valid and
infringed. The Court of Appeal held that both claims were valid but that neither was infringed.
Both sides appealed, Amgen against the decision that, as a matter of construction, the TKT
process is not within the claims and TKT against the rejection of its attack on the claims for
insufficiency and anticipation
Issue: Whether TKT's EPO fell outside the claims of Amgen's patent suit because of the
difference in the way it was made?

Rationale:
 Until the Patents Act 1977, which gave effect to the European Patent Convention
("EPC") the patent protection under UK law was limited to what was written or stated in
the claim. Article 69 of the EPC states that “ The extent of the protection conferred by a
European patent or a European patent application shall be determined by the terms of the
claims. Nevertheless, the description and drawings shall be used to interpret the claims."
 As an invention is protected only if a reference is made in the claim it becomes important
in determining what falls within the scope of the claims.
 As this was leading to injustice, the court in this case considered interpretation of Article
69 and came up with the Protocol on the Interpretation of Article 69 (the "Protocol")
which requires that Article 69 should not be read as to mean that the claims are given a
literal meaning nor should the claims be treated a mere guidelines. Rather the correct
treatment is a position between the two extremes, which provides a fair protection for the
patentee with a reasonable degree of certainty for third parties.
 The Protocol is intended to give the patentee the full extent, but not more than the full
extent, of the monopoly, which a reasonable person skilled in the art, reading the claims
in context, would think, he was intending to claim.
 In interpreting the claims, another approach is to take the objective test or the purposive
interpretation. The purposive interpretation laid down three questions, does the variant
have a material effect upon the way the invention works, if no, does the variant that did
not have material effect had been obvious at the time of filing the patent to a reader
skilled in the art and thirdly whether a reader skilled in art would have understood
through the language of the claim whether the patentee intended strict compliance of the
claim or not.
 The method used by both the companies was different to arrive to the same production of
drug. Thus there was no material effect on the result, but it was not obvious for the
person skilled in art to think that there was an obvious alternative method at the time of
filing of the claim. Thus the endogenous method introduced by TKT did not infringe
Amgen’s claim.
 In relation to the purposive construction, the doctrine of equivalents was also laid down
in the case. Doctrine of equivalents is a legal rule that allows a court to hold a party liable
for patent infringement even though the infringing device or process does not fall within
the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention.
 The effect of the doctrine of equivalents is to extend protection to something outside the
claims that performs substantially the same function in substantially the same way to
obtain the same result.
 Amgen’s claims are concerned with the expression of EPO by a gene, which is
exogenous to the cell. But the genes, which express EPO in cells by the TKT process, are
not exogenous.
 The court concluded that TKT did not infringe any of Amgen’s claims and dismissed the
appeal.
Rule: Doctrine of equivalent and purposive construction which states that a claim should not be
limited to literal interpretation and a party can be held liable for patent infringement even though
the infringing device or process does not fall within the literal scope of the claim. Thus the
doctrine of equivalent allows the patentee to extend his monopoly beyond the claims.
Holding: It was held by the court that TKT did not infringe any of the claims of Amgen. As the
method used by TKT was different from the method used by Amgen in the production of the
same drug. The person skilled in the art would also not come to the conclusion that the
production of GA-EPO is same as that of EPO.

Ravi Kamal Bali vs. Kala Tech and Ors.
2008(110)Bom LR 2167
Keywords: Industrial application; Non-literal infringement; Doctrine of Equivalence.
Facts: Both the plaintiff and the defendant were manufacturers of tamper proof locks and seals
that had industrial application. The Plaintiff apart from claiming an infringement of his patent
also claimed that Defendant No. 3, who used to work for The Plaintiff, conspired with Defendant
No. 1 in the manufacturing of the locks and the seals. Both the products used near identical
material i.e. Spring Steel with a slight difference in quality of the material used in the two. A
difference between the two products also existed in respect to the shape of the product. While the
Plaintiff's product was in the shape of a "V", that of the Defendant was rectangular in shape with
4 walls. The last difference between the two prod its was also in the number of "vanes" used in
the two products.
Issue: Whether the product of the Defendant is an infringement of the product of the Plaintiff
thus constituting a breach of the patent that was held by the Plaintiff.
Analysis:
 The Plaintiff and its counsel wanted the Courts to apply the Doctrine of Equivalence
which is mainly used in the United States of America. The Doctrine of Equivalence states
that in order for a device to infringe a claim it needs to perform substantially the same
function in substantially the same way to obtain the same result. The main test is whether
the defendant's product has taken the pith and marrow or sometimes what is called the
essence of the invention. The Court was of the view that in order to establish the Doctrine
of Equivalence they will have to observe the built, structure, functionality and shape of
the products.
 When it came to the material that had been used in the manufacturing process the Court
was of the view that both the products used the same material i.e. Spring Steel. The Court
further observed that the marginal difference in the quality of the two products will not
amount to any difference between the two inventions.
 The next aspect of the products that was considered by the Courts was the shape of the
Products. The shape of the Defendant's Product was in the shape of a rectangle while that
of the Plaintiff was in the shape of a "V". The learned judge stated that in no way did the
rectangular shape of the products of the Defendant contribute to the Functional Novelty
of the product. There was in no way that the shape of the product contributed to the any
change or improvement in the functionality of the product.
 The last thing that the Courts looked into was whether an additional number of "Vanes"
in the product of the Defendant would lead to a substantial difference in the two products.
The Court held in the negative stating that the constructional and functional aspect of the
products remained the same.

Conclusion: The Court was of the view that the product of the defendant did infringe the patent
of the Plaintiff. The ulterior reasoning was that there was no substantial difference between the
two products. The slight additions made to the product of the Defendant would not constitute a
new product. If it was recognised as a new product then the potential for misuse would be very
high as people would just change trivial aspects of patented products and would claim a new
patent on it.

Abercrombie & Fitch Co. v. Hunting World, Inc.
537 F.2d 4 (2nd Cir. 1976)
Keywords: Spectrum of Distinctiveness; Generic; Descriptive; Suggestive, Arbitrary; Fanciful;

Acquired Distinctiveness; Secondary Meaning.
This case established the Spectrum of Trademark Distinctiveness in the US, Breaing TM in to
classes which are accorded differing degrees of protection:
 GENERIC
 DESCRIPTIVE
 SUGGESTIVE
 ARBITRARY
 FANCIFUL
Facts and Procedural History: A complaint was filed in 1970 by Abercrombie & Fitch
Company (A&F), owner of well-known stores at Madison Avenue and 45th Street in New York
City and seven places in other states against Hunting World Incorporation (HW). A&F had 7
trademarks on different product for the word- Safari
It was alleged by A&F that HW has infringed some of its registered trademarks using the word
'Safari'. On this appeal from a judgment which not only dismissed the complaint but cancelled all
of A&F's 'Safari' registrations, including several that were not in suit, we relieve A&F of some of
its unhappiness but not of all.
Issues:
1) Whether any secondary meaning of the word “Safari” was created by A&F, which would
result in its trademark protection?
2) Whether HW is infringing trademark rights of A&F by using the word Safari in their
products?
Rule and Law Applicable: It was one of the very first cases which divided the trademarks into
classes which are accorded differing degrees of protection.
 A generic mark cannot get trademark protection in any condition.

 Descriptive mark can get trademark protection only when the word itself gets its
secondary meaning.
§ 2(e) of the Lanham Act, 15 U.S.C. § 1052, forbids the registration of a mark which, when
applied to the goods of the applicant, is "merely descriptive.” (US Law)

The Lanham Act makes an important exception with respect to those merely descriptive terms
which have acquired secondary meaning, it offers no such exception for generic marks. The Act
provides for the cancellation of a registered mark if at any time it "becomes the common
descriptive name of an article or substance".
(Indian Law: S.9(1), exception under Proviso)
Arguments by A&F:A & F alleged –
 That many years A&F has used the mark 'Safari' on articles "exclusively offered and sold
by it." Since 1936 it has used the mark on a variety of men's and women's outer garments.
 That A&F has spent large sums of money in advertising and promoting products
identified with its mark 'Safari' and in policing its right in the mark, including the
successful conduct of trademark infringement suits.
 That HW has engaged in the retail marketing of sporting apparel including hats and
shoes, some identified by use of 'Safari' alone or by expressions such as 'Minisafari' and
'Safariland'.
 That HW's acts would confuse and deceive the public and impair "the distinct and unique
quality of the plaintiff's trademark." A&F sought an injunction against infringement and
an accounting for damages and profits.
HW filed an answer and counterclaim –
 The word 'safari' is an ordinary, common, descriptive, geographic, and generic word"
which "is commonly used and understood by the public to mean and refer to a journey or
expedition, especially for hunting or exploring in East Africa, and to the hunters, guides,
men, animals, and equipment forming such an expedition" and is not subject to exclusive
appropriation as a trademark.
 That A&F's registrations using the word 'Safari' be cancelled on the ground that A&F had
fraudulently failed to disclose the true nature of the term to the Patent Office.
Analysis: The Court held –
 Although "safari" is a generic word, a genuine issue of fact exists as to whether the
plaintiff has created a secondary meaning in its use of the word "identifying the source"
and showing that "purchasers are moved to buy it because of its source."
 On the other hand, he concluded that A&F had no right to prevent HW from using the
word 'Safari' to describe its business as distinguished from use in the sale of a particular
product a conclusion we do not understand to be disputed;
 That HW had not infringed A&F's registered mark using the word 'Safari' under its brand
name on a "classical safari hat" or in advertising this as "The Hat for Safari" since such
use was purely descriptive;
 That HW had also not infringed by using the term 'Minisafari' as a name for its narrower
brimmed safari hats, and that HW was entitled to use the word 'Safariland' as the
description of an area within its shop and as the name of a corporation engaged in
the wholesale distribution of products imported from East Africa by an affiliate, Lee
Expeditions, Ltd., and in the "Safariland News," a newsletter issued by HW and Lee
Expeditions, With respect to shoes he concluded that both parties had used the word
'Safari' in a fanciful rather than a descriptive sense and hence that plaintiff might have a
valid infringement claim it could establish a secondary meaning;
 With respect to shoes he concluded that both parties had used the word ‘Safari’ in a
fanciful rather than a descriptive sense and hence that plaintiff might have a valid
infringement claim it could establish a secondary meaning;
 The pervasiveness of the principle is illustrated by a series of well-known cases holding
that when a suggestive or fanciful term has become generic as a result of a manufacturer's
own advertising efforts, trademark protection will be denied save for those markets where
the term still has not become generic and a secondary meaning has been shown to
continue.
Conclusion and Ratio:
 Applied to specific types of clothing 'safari' has become a generic term and 'minisafari'
may be used for a smaller brim hat;
 ‘Safari' has not, however, become a generic term for boots or shoes; it is either
"suggestive" or "merely descriptive" and is a valid trademark even if " merely
descriptive" since it has become incontestable under the Lanham Act;
 In light of the justified finding below that 'Camel Safari,' 'Hippo Safari' and 'Safari
Chukka' were devoted by HW to a purely descriptive use on its boots, HW has a defence
against a charge of infringement with respect to these on the basis of "fair use." We now
discuss how we have reached these conclusions.
There is no evidence that 'Safari' has become a generic term for boots. Since, as will appear,
A&F's registration of 'Safari' for use on its shoes has become incontestable, it is immaterial (save
for HW's contention of fraud which is later rejected) whether A&F's use of 'Safari' for boots was
suggestive or "merely descriptive."

Kellogg Co. v. National Biscuit Co.
305 U.S. 111 (1938)
Keywords: Descriptive Marks; Acquired Distinctiveness/ Secondary Meaning; Shape marks;

Infringement; Passing off; Identical Marks; Identical Goods/ Services; Generic.
Facts: Inventor Henry Perky developed a shredded wheat machine and introduced the cereal in
1893; he was issued utility patents in 1895 on both the shredded wheat and on the machine. The
cereal became successful, and Perky's company, the Shredded Wheat Company, continued to
manufacture the product after he retired.
The Kellogg Company started manufacturing shredded wheat cereal in 1912 after Perky's patents
expired. After the Shredded Wheat Company objected, Kellogg stopped manufacturing their
version in 1919. In 1927, the Kellogg Company resumed manufacturing shredded wheat,
prompting a lawsuit from the Shredded Wheat Company. In 1930, the Shredded Wheat
Company was acquired by the National Biscuit Company (later Nabisco), which again sued
Kellogg, both in Canada and in the United States, for unfair competition.
Nabisco complained in its lawsuit about Kellogg's use of the term "Shredded Wheat"; the
similarity of its cereal biscuits' shape to the Nabisco cereal biscuits and Kellogg's use on the
product box of a picture of two of the pillow-shaped cereal biscuits submerged in milk.
Procedural History: In 1928 National Biscuit Co. sued Kelllogg for unfair competition. In 1932
another suit was brought. In 1935 the suit was dismissed by the district court stating no ‘passing
off’ or deception had been shown and that the product had passed into public domain upon the
expiration of its patent. This decision was appealed and reversed by the District Court with a
decree that enjoined Kellogg from advertising its product as shredded wheat as well as producing
it in the same ‘pillow shaped’ form as well as apportioned damages. In 1938 National Biscuit Co.
requested clarification of the injunction because Kellogg insisted that it was only forbid from
using the term ‘shredded wheat’ in conjunction with the “pillow-shaped’ product and not
otherwise. Circuit court granted appeal for interpretation and amended it to forbidding use of
both the term and the shape independently of one another as well as together. Supreme Court
granted certificate this time to both.
Issue: Whether Kellogg Company has infringed the rights of Nabiasco by manufacturing
“Shredded Wheat”, a product of Nabiasco, for which trademark was rejected and it had passed
into the public domain upon the expiration of its patent?
Holding: Supreme Court reversed with directions to dismiss.

Rationale: The court uses the doctrine of genericide to explain that the term “shredded wheat” is
now generic and therefore secondary meaning is irrelevant. Further the court explains that the
term brings to mind in the public the product more so than the product’s origin. Then the court
explained that with regards to the trademark rights associated with the pillow shape, it was not
protected because the goodwill created by such a form had been established due to its monopoly
that had been allowed for by the patent, which has now expired. To hold that it is protectable
would fly in the face of the entire purpose of patent law, it is now allowed as part of the public
domain.
Finally, the court alludes to what would be termed as trade dress with regards to the packaging of
the product, and explains that Kellogg’s packaging and marketing was substantially unique so as
not to create confusion as to the source or to trade off the goodwill of National Biscuit’s trade
dress. For all these reasons, the Supreme Court reversed with directions to dismiss.
Rule: This case helps to establish the doctrine of genericide and probably lays the groundwork to
future cases with regards to trade dress and how it is to be treated. Most importantly however it
indicates the significance of trying to take a product previously protected by patent and later
using another form of intellectual property protection to protect it going forward and how in
most instances this is not going to stand.

Aggarwal Sweet Palace and Ors vs. Assistant Registrar of Trade Marks
2005 (30) PTC 336 IPAB
Keywords: Descriptive Marks; Acquired Distinctiveness/ Secondary Meaning; Prior user;
Surname; Similar Mark; Identical Goods. Services; Likelihood of confusion; S. 9 & 11.
Facts: An application was filed by the respondent M/s Aggarwal Sweet Corner for the
registration of trade mark ‘Aggarwal Sweet Corner’ in respect of sweets and namkeens. The
mark was claimed to be used since 1.6.84. Applicant disclaimed the word ‘corner’ in its
application. The appellant filed an appeal raising opposition that the mark is identical and
deceptively similar to their mark and they have been manufacturing and namkeens under the
trade mark Aggarwal Sweet Corner since the year 1986.
Issue:
Whether the applicant’s Trade Mark can be refused on the grounds of Sections 9 &11?.
Procedural History: The Assistant Registrar made a suggestion to the applicant that a
disclaimer about the word ‘sweet’ and ‘corner’ besides the word ‘Aggarwal’ should also be
added. Therefore, this was accepted by the applicant. But later, the Assistant Registrar
disallowed the application for the registration.
The Learned Deputy Registrar overruled the decision of assistant registrar on all the grounds.
With respect to section 9 of the act it was held that the applicants have adduced sufficient
evidence of user since 1.6.84 which is sufficient for the registration. Evidence containing several
documents namely, copies of purchase orders, copies of invoice, copies of advertisement, copies
of sale tax, copies from bills from advertisers, copies of analysis report, copies of balance sheet
and copies of orders received from customer. Hence these documents were enough evidence of
user since 1.6.84.
In matter it was said that the appellant have merely filed an affidavit with regard to evidence of
user and reputation of the mark which is not enough to prove the case.
Lastly, in matter of opposition with section 18(1), it was held that since the applicant has proved
evidence of user and reputation of the mark applied for, the applicant is entitled to the
proprietorship of the mark under section 18(1) of the act.
It was also said that the appellant claims to be trading in the name and style of M/s Aggarwal
Sweet Corner, but however it does not show anywhere that its goods are being marketed with the
said mark i.e 'Aggarwal Sweet Corner'. Hence the appellant have no trade Mark other than the
trading style but that cannot be treated as the trade Mark as there are no evidences to prove it.
Hence, the appeal was disallowed and the order to proceed with the registration was made in
favor of applicant.

Additionally, Assistant Registrar also held that any surname can be registered as a Trade mark
under section 9 (1)(a) of the act provided it meets the requirements of the act. However there is
no evidence that proves the ‘Aggarwal’ is a commonly used word in that trade (i.e sweets and
namkeens). Therefore in view of the evidence and the use and publicity filed by the applicant,
Assistant registrar came to a conclusion that despite the fact “Aggarwal” being a surname, the
word acquires distinctiveness and as such qualifies for registration. He also held that the
appellant has failed to provide the evidence to prove that “Aggarwal” is a commonly used
expression in this trade and thus the objection is overruled.
Holding: The Board held that for entitlement of trade mark under section 9, the one who contest
for the mark should be the prior user in time and in-fact should be using the mark consistently
from the date so claimed. The respondent in this case filed the application on 30.4.86 and has
claimed to be using the mark since 1.6.84. Therefore, he has reproduced sufficient evidence to
prove his claim he had been extensively and consistently making use of both the marks from
1.6.84. The Board says, we believe that so much of the documentary evidence for this period is
enough to establish that there was a user as from the date claimed in the application and it was a
consistent user. Therefore, there is no merit in changing the decision of the learned Deputy
Registrar or the Assistant Registrar, as the case may be, in all of these appeals. Hence, the
appeals stand dismissed.

Imperial Tobacco Company v. Registrar of Trademark
AIR 1968 Cal 582
Keywords: Geographical origin; Registration; Section 9(2); Descriptive Marks; acquired

distinctiveness/ Secondary meaning.
Facts: The Appellant in this case i.e. the Imperial Tobacco Company made its first application
for registration of a trade mark before the Registrar applying for registration as a trade mark of a
label bearing the device of snow-clad hills in outline and the word "Simla" written prominently
in various panels of the label. The specification of the goods in the application reads as
"Manufactured tobacco". "Word Simla' which forms the essential and distinguishing feature of
the mark is a famous geographical name and is not registerable except on very strong evidence of
distinctiveness. Its geographical signification was thus plain and unequivocal and the snow-clad
hills in outline in the label made the geographical significance inescapable.
Procedural History: The Registrar of Trademark rejected the application. Registrar stated that
in order to be registerable, the mark should have acquired distinctiveness on the date of making
the application for registration. ITC filed a fresh application, 3 years later in 1963 for same
trademark claiming that the trademark has achieved distinctiveness. This application was also
rejected by the Registrar of Trademark. Hence the appeal.
Issue: Whether this geographical name "Simla" has acquired distinctive ness within such a short
period between, April 1960(first application) and July 1963(Second Application) which is
barely a period of 3 years?
Holding: The Registrar finds that the appellants have no branch at Simla and that tobacco is not
grown nor is there any factory for manufacturing tobacco goods in the district or town of Simla.
The Registrar took the view that informed smokers may not be deceived, but to an ordinary
smoker, who had no special knowledge, Simla might not appear to be a totally unlikely place to
be associated with the origin of the cigarettes, and he would, therefore, be deceived by the
appellant's mark. The court held that evidence of distinctiveness is necessary for granting
trademark. It was held that the evidence provided by the appellant showing the sales of the
cigarettes in the country is not a sufficient proof to establish distinctiveness. The court was of the
view that if such trademark is granted, it will be a problem for someone who is from Shimla and
wants to use the trademark if he plans to manufacture cigarettes or any other product in Shimla.
Thus the Registrar’s decision to refuse the application was upheld.
Rationale: Registration of a geographical name is not allowed unless it is proved that the mark
has acquired distinctiveness because of its use or if it is a well-known mark. Distinctiveness
cannot be proved by the sales of the product, financial proofs or popularity.

Amritdhara Pharmacy V. Satya Deo Gupta
AIR 1963 SC 449
Keywords: Registration; Opposition; Similar marks; Similar Goods; Deceive; Confusion;

Honest Concurrent User; Acquiescence.
Facts: The Respondent (Satyadeo Gupta) had applied for registration of the trade name of a
medicinal preparation “Lakshmandhara” in relation to the medicinal preparation since 1923. It
was admitted by the Respondent that the Respondent’s product was mainly sold in the State of
Uttar Pradesh and there were only sporadic sales in other states. The Appellant (Amritdhara
Pharmacy) opposed the registration of the mark ‘Lakshmandhara’ on the ground that it had an
exclusive proprietary interest in the trade mark “Amritdhara” in relation to a similar medicinal
preparation which had acquired considerable reputation since 1901 and that the respondent’s
trade name “Lakshmandhara” was likely to deceive and cause confusion and therefore the
registration was prohibited. In response to the same the Respondent filed a counter affidavit,
raising the defenses of honest concurrent user and acquiescence on part of the Appellant as the
Respondent was using the mark ‘Lakshmandhara’ since 1923.
Issues:
1) Whether the name ‘Lakshmandhara‘ was likely to deceive the public or cause confusion
to trade under the Act?
2) Whether there was Such, acquiescence on behalf of the appellant in the use of the name
‘Lakshmandhara‘ in the State of Uttar Pradesh as to bring it within the, expression
‘special circumstances’ or ‘honest concurrent use’ under the Act?
Procedural History:
Procedural History:
 Registrar of Trade Marks: The Registrar of Trade Marks held that There was sufficient
similarity between “Amritdhara‘ and “Lakshamandhara” so as to cause confusion and it
was likely to deceive the public, but the acquiescence of the appellant in the use of the
trade name “Lakshmandhara” by the respondent in the relation to his product for a long
period to the knowledge of the appellant was special circumstance under S. 12 entitling
the respondent to have his name registered along with the appellant’s trade name.
Registrar, however, confined the registration to sales with the State of Uttar Pradesh only.
As a result of this order, passed by the Registrar, two appeals were filed. One by the
Appellant seeking cancellation of Registration of Respondent’s mark altogether and one
by the Respondent seeking registration for other states apart from Uttar Pradesh.

 High Court (Allahabad): The Hon’ble Allahabad High Court, rejected the appeal of the
Appellant and allowed the appeal of the Respondent allowing the registration of the mark
‘Lakshmandhara’ for the whole of India. The Hon’ble High Court held that the marks
‘Amritdhara’ and ‘Lakshmandhara’ are dissimilar and the words ‘Amrit’ and ‘Dhara’
being of common language cannot be made the monopoly of any individual and thus the
Hon’ble High Court found no reason to disallow registration of the trade mark
‘Lakshmandhara’.
On the question of honest concurrent use the Hon’ble High Court favoured the Respondent but
on the question of acquiescence founded favour in the arguments of the Appellant and held in his
favour. Then SLP was filed in the Supreme Court.
Holding: The Hon’ble Supreme Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’
are similar and thus overruled the decision of the Allahabad High Court and upheld the decision
of the Registrar of Trade Marks. In coming to the said conclusion, the Court relied on:
 The test of comparison of marks, which states that the question of comparison of two
marks has to be approached from the point of view of a man or consumer of average
intelligence and imperfect recollection.
The Court held that-
“A critical comparison of two names may disclose some points of difference but an unwary
purchaser of average intelligence and imperfect recollection would be deceived by the overall
similarity of the two names having regard to the nature of the medicine he is looking for with a
somewhat vague recollection that he had purchased a similar medicine on a prev ious occasion
with a similar name”; and
The court explained and summarized the test (taken from an old English Case-Pianotist Co.'s
Application, 1906) applied consistently the courts in context of similar goods
"You must take the two words. You must Judge them, both by their look and by their sound. You
must consider the goods to which they are to be applied. You must consider the nature and kind
of customer who would be likely to buy those goods. In fact you must consider all the
surrounding circumstances and you must further consider what is likely to happen if each of
those trademarks is used in a normal way as a trade mark for the goods of the respective owners
of the marks.”
It was held further that the two names as a whole should be considered for comparison and not
merely the component words thereof separately.

On the point of ‘Honest Concurrent’ user the court found in favor of the Appellant (Amritdhara
Pharmacy Co.) and held that there was Acquiescence by the Appellant to the use of the
Respondent of the mark ‘Lakshmandhara’ as both the companies has been advertising through
mediums which were common to both the appellant and the respondents.
Conclusion: The marks ‘Amritdhara’ and ‘Lakshmandhara’ are similar and thus overruled the
decision of the Allahabad High Court and upheld the decision of the Registrar of Trade Marks.
The Supreme Court allowed the appeal, set aside the judgment of the high court and restored
those of the registrar of trademarks.

F. Hoffmann- La Roche & Co. Ltd vs Geoffrey Manners & Co. Pvt. Ltd
1970 AIR 2062, 1970 SCR (2) 213
Keywords: Similar Goods; Similar Marks; Invented Mark; Fanciful Mark; Descriptive Mark;
registration.
Facts: The appellant is a limited liability company incorporated under the laws of Switzerland
and carries on business in the manufacture and sale of pharmaceutical and chemical products.
The respondent is a company incorporated under the Companies Act in India and also carries on
business in the manufacture and sale of pharmaceutical products. On December 2, 1946 the
appellant applied for registration of its trade mark "PROTOVIT" and it was granted. Thereafter
the appellants used that mark on multi-vitamin preparations in liquid and tablet forms and its
goods are being sold under that mark at least since the year 1951. On January 28, 1.957 the
respondent applied for registration of its mark "DROPOVIT" in respect of "medicinal and
pharmaceutical preparations and substances". The application was registered but the
advertisement of the respondent's application escaped the notice of the appellant who did not
hence oppose the registration. Later the appellant's agents drew the attention of the appellant to
the respondent's mark "DROPOVIT". There was negotiation between the parties but the
negotiations failed. The appellant applied for rectification of the Register by removal therefrom
of the respondent's trade mark on the ground that the respondent's mark resembled the appellant's
mark which is likely to deceive or cause confusion. Later they amended the application and
added additional ground that "DROPOVIT" was not an invented word. The Joint Registrar
rejected the application and held that "DROPOVIT" was not deceptively similar to
"PROTOVIT" and that the word "DROPOVIT" considered as a whole was not descriptive.
Issues:
1) Whether the word "DROPOVIT" is deceptively similar to the word "PROTOVIT"?

2) Whether the word "DROPOVIT" was an invented or descriptive word
Holding: It was held that the High Court and the Joint Registrar of the Trade Marks were correct
in emphasizing that there was no persisting tangible threat of misperception if the respondent’s
trade mark was permitted to remain to remain on the Register. Further, the court opined that
“DROPOVIT” was an invented word by the virtue of it not falling under the ambit of a
descriptive word. The petition therefore failed and was dismissed with costs.
Rationale: For the purposes of the first issue, the Supreme Court went into the meaning of the
words “to deceive” and “to cause confusion”. They concluded with regard to Parker- Knoll
International Ltd, that while deceiving involves making false representations to make a person
believe what is otherwise not the truth (even if this is done without knowledge and intention),
confusion may be caused as a consequence of one’s disability or lack of knowledge to extricate
the truth stated to him from what is already known to him, perhaps because he chooses not to
take the trouble to do so.
The test for comparing two trademarks was articulated by Lord Parker in the case of Pionotist Co
Ltd. It was put forth that to begin with, the two marks must be judged by their appearance and
sound. The nature of the goods and the target customers to which they would be attributed must
also be accounted for, alongside the surrounding circumstances. If confusion in the minds of the
public is the foreseeable result of allotting the trade marks, then registration ought to be denied.
The precise elucidation of law was recognized by the court in the passage of Lord Justice
Luxmoore in the Court of Appeal. It was indicated that similarity must be ascertained on the
basis of first impression since only an individual who is aware of one word and has an imperfect
recollection of the same is likely to be confused. It was also pointed out that the totality of the
suggested word should be such that is likely to cause deception or confusion in the minds of the
persons habituated to the prevailing trade mark and merely the corresponding portions must not
be compared. Applying this in the present case, it was held that if one emphasizes upon the
uncommon components in the two words, it is difficult to establish that one would be confused
for the other. Accounting for letters ‘D’ and ‘P’ in “DROPOVIT” and the corresponding letters
‘P’ and ‘T’ in “PROTOVIT”, it was believed that they cannot be slurred over in pronunciation
and their differences made it reasonably impossible to mistake the words visually and
phonetically. To add to this, the Court also took note of Section 61(2) of the Drug Rules, 1945
and highlighted that since preparation of vitamins falls under item 5 of Schedule C (1), a license
is mandatory for its preparation and sale. This combined with the fact that a prescription is
needed before purchase makes the possibility of confusion remote. Finally, since 57 trademarks
have been registered with suffix ‘VIT’, an average customer is presumed to be on his guard and
take special care.
With regard to the second issue the Supreme Court turned to the Diabolo case, where Parker J.
expounded upon the meaning of “inventive word”. He said that such a word must be newly
coined and must not bear any conventional or apparent meaning unless one has been allotted to
it. The High Court had pointed that the original application for rectification contained no ground
underlining that “DROPOVIT” was a descriptive word. This implied that it did not even strike
the legal advisors of the appellants that “DROPOVIT” was not an inventive word at the first
instance. To add to this, Justice Tarkunde had pronounced that he did not see “DROPOVIT” to
mean “DROP OF VITAMINS” till a description was given to him. Hence, the Court, not having
reasons to believe otherwise, did not overturn the decision of the lower courts.
Rule:
1) In an order to see whether a trade mark is deceptively comparable to the other, it is not
imperative that it is intended to deceive or cause confusion. In fact, its probable outcome
on the ordinary customers is considered by taking imperfect recollection as the
benchmark. While both visual and phonetic tests are put into play, the marks are also
looked at in their totality and not in parts to see if deception or confusion is the outcome
in the minds of the individuals familiar to the existing trade mark.
2) To qualify as being an inventive word, a word must be newly coined and must not
convey any ordinary or obvious meaning unless one is designated to it.

Corn Products Refining Co. vs Shangrila Food Products Ltd. 1959
AIR 1960 SC 142
Keywords: Registration; Opposition; Similar Marks; Similar Goods; Average Consumer with
imperfect recollection.
Facts: The appellant is a corporation which had registered the mark “Glocovita” under the Trade
Marks Act, 1940, in respect of a substance used as food or as an ingredient in food containing
glucose powder mixed with vitamins. Seven years later, the respondent, a manufacturer of
biscuits, made the application for registration of the mark “Gluvita” and it agreed to limit the
registration only to biscuits. The appellant opposed the respondent’s application.
Procedural History: On appeal the Deputy Registrar held that the respondent’s proposed trade
mark registration could not be refused because, firstly, biscuits were not goods of the same
description as glucose powder mixed with vitamins. Secondly, the words “Glucovita” and
“Gluvita” were not visually or phonetically similar. On Appeal to the Bombay High Court, the
court set aside the Deputy Registrar’s order and held that the respondent’s mark could not be
registered. The Respondent appealed in the same High Court, which held that its mark cannot be
refused to register. The appellant finally appealed to the Supreme Court.
Issues:
 Whether the goods are of the same description as glucose powder mixed with vitamins in
the two products was in the same class?
 Whether the words ‘Glucovita' and ‘Gluvita' were not visually or phonetically similar and
that there was no reasonable likelihood of any deception being caused by or any
confusion arising from, the use of the respondent's proposed mark?
Analysis:
 The mark ‘Glucovita' has acquired a reputation among the general buying public. Though
the goods are not of the same description but there is evidence that glucose is used in the
manufacture of biscuits. That would establish a trade connection between the two
commodities, namely, glucose manufactured by the appellant and the biscuits produced
by the respondent. An average purchaser would therefore be likely to think that the
respondent's ‘Gluvita biscuits' were made with the appellant's ‘Glucovita' glucose.
Biscuits containing glucose are manufactured with liquid glucose
whereas the appellant's mark only concerns powder glucose. We will assume that only
liquid glucose is used in the manufacture of biscuits with glucose. But there is nothing to
show that an average buyer knows with what kind of glucose, biscuits containing glucose
are or can be made with. That there is trade connection between glucose and biscuits and

a likelihood of confusion or deception arising therefrom would appear from the fact
stated by the appellant that it received from a tradesman an enquiry for biscuits
manufactured by it under its mark ‘Glucovita'. The tradesman making the enquiry
apparently thought that the manufacturer of ‘Glucovita' glucose was likely to
manufacture biscuits with glucose; he did not worry whether biscuits were made with
powder or liquid glucose. The commodities concerned in the present case are so
connected as to make confusion or deception likely in view of the similarity of the two
trade-marks.
 ‘Glucovita' has acquired a reputation among the general buying public. The marks with
which this case is concerned are similar. Apart from the syllable “co” in the appellant's
mark, the two marks are identical. That syllable is not such as would enable the buyers in
our country to distinguish the one mark from the other.
Again, in deciding the question of similarity between the two
marks we have to approach it from the point of view of a man of average intelligence and
of imperfect recollection. To such a man the overall structural and phonetic similarity and
the similarity of the idea in the two marks is reasonably likely to cause a confusion
between them.
Rule: To determine the question of likelihood of deception or confusion between the identity of
two competing marks or their close resemblance, the trade connection test should be applied.
Therefore, a trade connection between glucose and biscuits would appear to be established as a
result of which, the commodities concerned are so connected as likely to create confusion or
deception in view of the similarity of the two trademarks.
Conclusion: The Court said that the two marks are so similar so as to cause confusion to the
public and hence allowed the appeal.

Daimler Benz Aktiegesllschaft v. Hybo Hindustan
AIR 1994 Delhi 239
Keywords: Infringement; Passing off; Similar Marks; Dissimilar Goods; Dilution; Well-known
Marks; Honest concurrent user; Surname; Geographical origin; Descriptive Marks; Acquired
Distinctiveness/ Secondary Meaning.
Facts: The plaintiff, Daimler Benz, having a three pointed star in a ring as its trademark and a
manufacturer of one of the finest engineered cars in the world filed a law suit asking for
permanent injunction against the defendants for the infringement of their Trademark. The
defendant was using the trademark ‘Benz’ and ‘three pointed human being in a ring’ as a mark
for his business of undergarments.
Issue: Should injunction be granted against the use of trademark of Benz by Hybo for its
undergarment business? Would a delay in filing of the suit take away the right of the plaintiff?
Holding: The defendant was restrained by an injunction from using the name of Benz and the
three pointed human in a ring to carry on its business of undergarments.
Rationale: The court acknowledged that the mark and the word Benz and the three pointed star
in a ring have for long been associated with luxury car maker, Mercedes Benz. Benz is no
Indian’s surname and the defendants accepted that they did not name the brand after the city
‘Mercedes’. Any person who has even a very limited knowledge of the world of cars would be
easily able to associate the name of Benz with the luxury car manufacturer, Mercedes Benz.
The court rejected the argument about delay in filing for injunction distinguishing the present
case from the previous cases where injunction was not granted due to delay in filing for an
injunction. However, the court rejected this old principle, saying that it cannot be applied to a
well-known and reputed brand like Mercedes Benz. The principle of ‘honest concurrent user’, as
laid down in Amritdhara Pharmacy v Satya Deo Gupta is also inapplicable to a well known
brand as Benz. “The trade marks law is not intended to protect a person who deliberately sets out
to take the benefit of somebody else’s reputation with reference to goods, especially so when the
reputation extends worldwide. By no stretch of imagination can it be said that use for any length
of time of the name ‘Benz’ should not be objected to.”
None should be allowed to use a world famed name to goods which have no connection with the
type of goods which have generated the worldwide reputation and dilute the reputation of a very
high priced and extrememly well engineered car brand by associating it with underwears.

Balkrishna Hatcheries vs Nando'S International Ltd
2007 (109) Bom L R 306
Keywords: Similar Goods; Identical Goods; Similar Marks; Confusion; Decpetion;

Registration.
Facts:
 Def 1- Nando’s- company registered in Ireland
 Def 2 - Nando's Indage Restaurants Private Limited, is a franchisee.
 Plaintiff - Nandu’s.
Nandu’s owner is Mr. Nandakumar. He is known to family and business associates as NANDU
and they referred to his business as Nandu’s business. Nandu’s was formed in 1977, and
registered in 1989 under Class 29 to the Schedule to the Trade Marks Rules in respect of
processed and frozen meat products falling in Class 29. Plaintiff also owned the copyright in
respect of the artistic work consisting of the said trademark. Nandu’s business started as poultry
farm but slowly extended to selling frozen chicken, kebabs, biryani, in ready to eat form. They
have not yet opened restaurants but plan to. Plaintiff registered another trademark in 2005. The
word "Nandu's" is a prominent feature in the said trademark as well.
In 2001, Nando’s (def) filed an application for registration of their trademark. But plaintiff's
registered trademark was cited as a conflicting mark by the registrar. Plaintiff filed for an
injunction to prohibit defendants to use their mark on similar products as well as their
restaurants.
Issue: Whether the court should grant injunction to prohibit defendant to open a restaurant under
the name Nando’s?
Sub issues-
1. Whether Nandu’s and Nando’s are similar marks?
2. Whether the goods and service they provide are identical or similar?
Holding:
 It has been established that NANDU’s is a very famous trademark and have a huge
reputation. Yes, visually, the two marks are not only deceptively similar but virtually
identical. Even phonetically, the two marks are similar. The similarity is enhanced taking
into consideration the possible pronunciation of the Defendant's mark in our country.
 There can be a little doubt that, as far as the packaged food is concerned, the plaintiffs are
entitled to the injunctions sought. Packaged food, if sold by the Defendants would
undoubtedly be similar to the goods dealt in by the Plaintiffs.
 To find whether the restaurant business is similar to the business of the Plaintiffs
following points must be taken into consideration:

a) The respective uses of the respective goods or services: Nandu’s sells frozen and
processed meat products whereas Nando’s provides cooked food along with
hospitality services;
b) The respective users of the respective goods or services: Nandu’s targets shoppers
who buy their products to be cooked and consumed at home whereas Nando’s is
meant for those who want to go outside for a social activity to a specialized
restaurant;
c) The physical nature of the goods or acts or service: Processed and frozen meats are
not the same as or similar to restaurant services;
d) The respective trade channels through which the goods or services reach the market:
Nandu’s sells its product through cold storages and supermarkets whereas Nando’s
serves food chosen from a menu;
e) In the case of self-serve consumer items, where in practice they are respectively
found or likely to be found in supermarkets and in particular whether they are, or are
likely to be, found on the same or different shelves;
f) The extent to which the respective goods or services are competitive. The question to
be asked is "is there a likelihood of confusion?: Frozen and processed meats are not in
competition with Nando’s restaurant services in any way.
“The marketing practices of today are such that a customer who attends a banquet which he
knows is catered by the Appellant would, when he encounters a food product in the grocery store
under an almost identical mark, naturally assumes that it came from the catering firm. The
difference between a service for the catering of food and the actual sale of food is a rather fine
legal distinction not likely to be drawn by laymen.”
This allows us to put in perspective the following criteria to decide whether or not there was
infringement when the goods/services are not similar:
a) Identical/similar marks: The names are only slightly phonetically similar;

b) Reputation: Nando’s as an internationally established brand already has a vast reputation
and does not need to infringe on another mark to exploit its distinctiveness;
c) Trademark has distinctive character: Both Nando’s and Nandu’s are dissimilar marks as
they are inherently distinctive and are even pronounced differently;
d) Taking unfair advantage: Due to a prior international reputation, Nando’s does not need
to take advantage of another mark, and because of the dissimilarity of goods and services
and the marks themselves, it was observed that Nando’s was not taking unfair advantage.
Conclusion:For the above reasons, the perpetual injunction was not granted as it was held that
Nando’s was not infringing upon the trademark, Nandu’s.

Rolex SA v Alex Jewellery Pvt Ltd
2009 (6) RAJ 489 (Del.)
Keywords: Well-known mark; Dilution; Tarnishment; Blurring; Identical Marks; Dissimilar

Goods.
Facts: The plaintiff (Rolex) is a company incorporated under the laws of Switzerland and is
engaged in the business of manufacture and distribution of premium quality watches. The
plaintiff is aggrieved by the action of the defendant (Alex) carrying on business at Mumbai of
manufacturing, selling, distributing and trading in artificial jewelry under the mark ROLEX. The
Plaintiff had also come across a website of defendant which was registered as
www.rolexjewelleryhouse.com and it was brought to light with further investigation that
defendant was indeed manufacturing artificial jewelry in the name of ROLEX which was in turn
being retailed
The plaintiff (Rolex) claimed the following:
a) Adoption of the trademark ROLEX and the first registration thereof in Switzerland in
1908.
b) Use of that trademark for trading around the world
c) That in India also it is registered in class 14 relating to Horological and chronometric
instruments
d) That the plaintiff on 24th April, 2001 also got ROLEX in Hindi registered in class 14
with respect, to chains, charms, diamond earrings, jewel cases, medallions, necklaces,
ornaments etc.
e) Have used the trademark ROLEX in India since 1912 i.e., even prior to the registration
thereof in 1949
f) It is the case of the plaintiff that ROLEX is a well known trade mark as defined under
Article 6 of the Paris Convention to which India is a signatory
The defendant argues that law of limitation bars the suit. The defendant also claims protection
under S. 34 and 29 (4)(c) of the Trademarks Act.
Issues:
1) Whether the plaintiff’s mark can be categorized as a well-known mark.

2) Whether S.34 and 29 (4) (c) can be used as a valid defense by the defendant
Rule:
 Section 33 of the Trademarks Act presents the rule of acquiesce which states that the
proprietor of an earlier mark cannot oppose the latter trademark or claim to be invalid
where the proprietor of the first trademark has accepted the latter trademark without a
protest for a continuous period of five years. Knowledge of the existing latter mark and
the unwillingness to oppose is what accounts for acquiesce.
 Section 34 being a non obstante clause protects the proprietor of marks who (1) holds the
first use of the mark in trade in relation to the predecessor in his title or (2) used the mark
before the first register of trademark in respect of the goods of his predecessor.
 Section 29 (4)(c) of the said act protects well-known marks, meaning those whose
reputation in India is prominent enough to cause unfair advantage to those who use it in
trade, which could also cause detriment to the respect and distinctiveness of their own
mark.
Analysis: The court justifies in its holding that:
 Section 34 cannot be used as a defense as the defendant could not prove continuous use
of the mark since their claim in 1993.
 For section 33 to apply, the defendant must have registered trademark Rolex in relation to
artificial jeweler in 1993. As they had not, they cannot contend for the plaintiff to not
follow through with the suit. While they were also unable to present the paperwork
relating to the intent to trade until after registration which was in 2001.
 The defendants must disprove that the plaintiff was is well known mark in India, which
does not have to be only in regards of jewelry.
Holding: The Court held that “Rolex” was a well-known trademark since it has been registered
in more than 140 districts and also has a reputation in India and therefore, the defendant was
restrained under Section 29(4)(c) of the Trade Marks Act from using the trademark “Rolex” in
any way and was ordered to take down the website as well. The goods of the plaintiff would
cease to be a status symbol if it had continued, which would prove to be detrimental to the
plaintiff.

Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd.
[2004] All ER (D) 301
Keywords: Shape marks; refusal of registration; Generic; Acquired Distinctiveness; Technical
results.
Facts: The petitioner is Philips Electronic, which had presented a shaver in 1966. The shaver had
a plate with three rotational shavers orchestrated in an equilateral triangle. It had enlisted its
trademark for the shaver. The imprint was a plate of three turning razor sharp edges in an
equilateral triangle. The other producer i.e., Remington then concocted a shavers that were sold
in the American market. Philips asserted that Remington had encroached its trademark by
utilizing the characteristic of a shaver with three turning sharpened pieces of steels orchestrated
in an equilateral triangle which made disarray in the psyches of the customer as they thought it
was an item produced by Philips. Remington then again denies that it is trademark infringement
and actually the enlistment of the imprint for Philips ought to be denied.
Remington battled that only on the grounds that the imprint has gained an distinctive character in
light of the fact that Philips concocted the shaver to begin with, the trade mark law does not
permit him enroll such stamps. The enlistment of such checks ought not be permitted in light of
the fact that it is important to acquire a fundamental specialized result and in this way such
enrollment is invalid.
Issue: Whether the shape of the mark should be necessary in order to obtain a specific technical
result?
Holding: Philips had not obtained a particular character despite the fact that it was the dealer that
presented the shaver with such a shape in the business. The courts held that it couldn't enroll as it
was a shape, which is important to get specialized result, and consequently enlistment of such an
imprint is invalid. Hence it was held that Remington has not encroached the trademark of
Philips, since it was never a legitimate trademark and Philips had neglected to demonstrate that it
had obtained distinctive attributes.
Ratio: The trademark law goes for keeping and shielding a proprietor from being allowed
imposing business model over specialized and utilitarian arrangements. It ought not turn into a
deterrent to alternate contenders who need to enter and uninhibitedly offer their items and
administrations. Shapes that give specialized result ought to be openly accessible and accessible
to all. Regardless of the possibility that different shapes can give same specialized result the law
does not give the privilege to exchange check a shape, which gives specialized result. If a shape
has obtained a distinctive character from being utilized over a time of time, it can be permitted to
be enrolled. At the same time, the imprint utilized by Philips did not gain any distinctive
attributes. The shape utilized by Philips was one, which was important to get that specialized
result i.e., the route in which the hair would be trimmed. In this way such check was to be

rejected enrollment. If one needs to enroll their imprint then it is basic that there ought to be
impulsive expansion to the shape, which can't be credited to perform some useful reason.

Cadila Health Care Ltd. v. Cadila Pharmaceuticals
2001 (21) PTC 541 SC
Keywords: Passing off; Principles to determine similarity of marks; Pharmaceutical products

and similarity of marks; Identical Goods.
Facts:
 The appellant and the respondent are pharmaceutical companies. They had taken over the
assets and business of the erstwhile Cadila Group after its restructuring under Sections
391 and 394 of the Companies Act.
 Under the restructuring scheme both the appellant and the respondent got the right to use
the name “Cadila" as a corporate name.
 The appellant manufactured a drug "Falcigo" containing artesunate for the treatment of
cerebral malaria commonly known as "Falcipharum". On 7-10-1996, the Drugs
Controller General (India) granted permission to the appellant to market the said drug
under the trade mark of "Falcigo".
 On 10-4-1997, the respondent got permission from the Drugs Controller General (India)
to manufacture a drug containing "Mefloquine Hydrochloride". This drug was also used
for the treatment of "Falcipharum Malaria" and was being sold by the respondent under
the trade mark of "Falcitab".
 The appellant filed a civil suit for injunction against the respondent from using the trade
mark "Falcitab" on the ground that the same would be passed off as the appellant's drug
"Falcigo" for the treatment of the same disease in view of confusing similarity and
deception in the names and more so because the drugs were medicines of last resort.
 The respondent contended, inter alia, that the two products in question were Schedule 'L'
drugs which could be sold only to the hospitals and clinics with the result that there could
not even be a remote chance of confusion and deception.
Procedural History:
 The trial court refused to grant interim injunction.

 The High Court upheld the order of the trial court.
Laws Involved:
 In the case of unregistered trade-marks, a passing-off action is maintainable. The passing-

off action depends upon the principle that nobody has a right to represent his goods as the
goods of somebody. In other words a man is not to sell his goods or services under the
pretence that they are those of another person.

 What has to be seen in the case of a passing-off action is the similarity between the
competing marks and to determine whether there is likelihood of deception or causing
confusion. It is not correct to say that the difference in essential features is more relevant.
The principle of phonetic similarity cannot be jettisoned when the manner in which the
competing words are written are different.
 Broadly stated, in an action for passing off on the basis of unregistered trade-mark
generally for deciding the question of deceptive similarity the following factors are to be
considered:
i. The nature of the marks i.e. whether the marks are word marks or label marks or
composite marks i.e. both words and label works.
ii. The degree of resemblance between the marks, phonetically similar and hence
similar in idea.
iii. The nature of the goods in respect of which they are used as trade-marks.
iv. The similarity in the nature, character and performance of the goods of the rival
traders.
v. The class of purchasers who are likely to buy the goods bearing the marks they
require, their education and intelligence and the degree of care they are likely to
exercise in purchasing and/or using the goods.
vi. The mode of purchasing the goods or placing orders for the goods.
vii. Any other surrounding circumstances which may be relevant in the extent of
dissimilarity between the competing marks.
Weightage to be given to each of the aforesaid factors depending upon facts of each case and the
same weightage cannot be given to each factor in every case.
Issue: Whether the respondent’s trade-mark could be passed off as the appellant’s trade-mark?
Analysis:
 Drugs have a marked difference in the compositions with completely different side
effects, and therefore, the test should be applied strictly as the possibility of harm
resulting from any kind of confusion by the consumer can have unpleasant if not
disastrous results. The courts need to be particularly vigilant where the defendant's drug,
of which passing off is alleged, is meant for curing the same ailment as the plaintiff's
medicine but the compositions are different. The confusion is more likely in such cases
and the incorrect intake of medicine may even result in loss of life or other serious health
problems. Schedule 'H' drugs are those which can be sold by the chemist only on the
prescription of the doctor but Schedule 'L' drugs are not sold across the counter but are
sold only to the hospitals and clinics. Nevertheless, it is not uncommon that because of
lack of competence or otherwise, mistakes can arise especially where the trade-marks are
deceptively similar.
 In the present case, although both the drugs are sold under prescription but this fact alone
is not sufficient to prevent confusion which is otherwise likely to occur. In view of the
varying infrastructure for supervision of physicians and pharmacists of medical
profession in India due to linguistic, urban, semi-urban and rural divide across the
country and with high degree of possibility of even accidental negligence, strict measures
to prevent any confusion arising from similarity of marks among medicines are required
to be taken.
 Trade mark is essentially adopted to advertise one's product and to make it known to the
purchaser. It attempts to portray the nature and, if possible, the quality of the product and
over a period of time the mark may become popular. It is usually at that stage that other
people are tempted to pass off their products as that of the original owner of the mark.
That is why it is said that in a passing-off action, the plaintiff's right is against the
conduct of the defendant which leads to or is intended or calculated to lead to deception.
 Public interest would support lesser degree of proof showing confusing similarity in the
case of trade mark in respect of medicinal products as against other non-medicinal
products. Drugs are poisons, not sweets. Confusion between medicinal products may,
therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature
and the pressures placed by society on doctors, there should be as many clear indicators
as possible to distinguish two medicinal products from each other. It is not uncommon
that in hospitals, drugs can be requested verbally and/or under critical/pressure situations.
Many patients may be elderly, infirm or illiterate. They may not be in a position to
differentiate between the medicine prescribed and bought which is ultimately handed
over to them.
 The decisions of English courts would be relevant in a country where literacy is high and
the marks used are in the language which the purchaser can understand.
 While examining such cases in India, what has to be kept in mind is the purchaser of such
goods in India who may have absolutely no knowledge of English language or of the
language in which the trade mark is written and to whom different words with slight
difference in spellings may sound phonetically the same. While dealing with cases
relating to passing off, one of the important tests which has to be applied in each case is
whether the misrepresentation made by the defendant is of such a nature as is likely to
cause an ordinary consumer to confuse one product for another due to similarity of marks
and other surrounding factors. What is likely to cause confusion would vary from case to
case. A stricter approach should be adopted while applying the test to judge the
possibility of confusion of one medicinal product for another by the consumer. Stringent
measures should be adopted especially where medicines are the medicines of last resort
as any confusion in such medicines may be fatal or could have disastrous effects. The
confusion as to the identity of the product itself could have dire effects on the public
health.

 Keeping in view the provisions of Section 17-B of the Drugs and Cosmetics Act, 1940, it
is but proper that before granting permission to manufacture a drug under a brand name
the authority under that Act is satisfied that there will be no confusion or deception in the
market. The authorities should consider requiring such an applicant to submit an official
search report from the Trade Mark Office pertaining to the trade mark in question which
will enable the Drug Authority to arrive at a correct conclusion.
Conclusion: The Supreme Court refused to interfere with the orders of the courts below but gave
directions for expeditious disposal of the suit. In the instant judgment, the Supreme Court gave
the reasons for non-interference with the impugned orders while setting out the principles which
are to be kept in mind when dealing with an action for infringement or passing off, especially in
the cases relating to medicinal products.

ITC V. Philip Morris
2010 (42) PTC 572 (Del.)
Keywords: Well Known marks; Dilution; Tarnishment; Blurring.
Facts: ITC is the company that owns the mark “WELCOMGROUP”. Under the same banner
ITC owns 14 hotels which include ITC Maurya (Delhi), ITC sonar (Kolkata), ITC Windsor
(Bengaluru) etc. ITC also claims that the same mark has been in extensive use for its series of
products “Kitchens of India”, which are ready to eat.
Philip Morris is the company that owns the mark “Malboro”, which is an established mark in the
cigarette industry. In the year of 2010, Malboro festive pack was introduced in India.
In this case, ITC alleges that Philip Morris has by launching its product, has diluted the mark
owned by ITC called as the “Welcomgroup”. They allege that there is high resemblance in the
two logos and the well-established ITC logo is losing its distinctiveness that it has acquired over
the years. They file for an injunction at the High Court of Delhi in order to stop Malboro from
trading under such a similar mark.
Issue: Whether the High Court of Delhi should grant such an injunction in favour of ITC based
on its claim of distinctiveness for the “Welcomgroup” logo?
Judgment: The Court in this case took into the consideration arguments raised by both the
Counsels for the plaintiffs and the defendants.
The gist of the plaintiff’s contention was that ITC had acquired distinctiveness over the years in
the usage of the mark ‘Welomgroup” as it had been in use in ITC’s hospitality services and food
products.
The gist of the defendant’s contention is that the mark “Welcomgroup” was one of the many
composite marks, which ITC owned. Further, though ITC has been involved in the
manufacturing of cigarettes, it has never used this particular mark for the purposes of trade.
The Court laid down the following criterion to be satisfied for determining Dilution:
a) Impugned mark is either similar or identical to the senior mark

b) The senior mark is a well –known mark in India
c) The usage of the impugned mark in the trade is detrimental to the distinctiveness of the
senior mark.

The Court then adapted a Global outlook in determining the case at hand. They said that the
distinctiveness associated with a mark is based on its impression in its entirety, taking into
consideration the principal constituents. They further said that the characteristic of the
“Welcomgroup” logo might extend to the market of luxury goods, but not to the market of
cigarettes.
They concluded that the Injunction could not be granted based on the above grounds and the
introduction of the “Malboro” mark will not dilute the “Welcomgroup” mark.

Tata Chemicals Limited Vs. Deputy Registrar of Trade Marks and Anr
2003(27) PTC 422 (DEL)
Keywords: Surname; Descriptive marks; Acquired Distinctiveness/ Secondary meaning; Honest

Concurrent User; S. 12.
Facts: There was a dispute regarding proprietary rights over the trade mark ‘TATA’ which
defendant stated was assigned to M/s Tata Pressure Cooker Manufacturing Company and was
being used by the company from 1981. The D then filed for an application for registration of
trademark in the year 1994 and the application for registration was opposed by the plaintiff-
House of Tata.
Procedural History: Application for registration was filed by the Tata Pressure Cooker
Manufacturing Company and opposition has been filed by M/s Tata Chemicals Ltd. challenging
the impugned order passed by the Registrar of Trade Marks whereby he had allowed application
for registration filed by in both the petitions and had disallowed the objections of the House of
Tata. The same order has been challenged in this case.
Issues:
1) Whether the P could use the trade mark TATA to sell pressure cooker?
2) Whether P could then be given registration for the trade mark TATA?
Holding: The court held that TATA was the trade mark of the P group since the word TATA is a
household expression. Since the P group had considerable of reputation, accrued to the trade
mark TATA, the use of an identical trade mark would cause confusion and deception. Since the
D had no evidence to prove he was an honest concurrent user, the application for registration of
trade mark was quashed.
Rationale:
 The P proved that House of Tata was in existence since the 19th Century founded by late
Sir Jamshed Ji Tata. Since the name TATA was not descriptive it had limited protection
under trade mark act of 1991 unless P could prove that it acquired distinctiveness.
 The P could prove that manufacturing activities of the House of TATAS touched almost
every aspect of day to day life from edible products to household products, automobile
and computers.
 The trade mark TATA is a “well known” trade mark and is exclusively associated in the
minds of the public with THE HOUSE OF TATAS. By the year 1981, the House of
TATAS had become a household name and various products under the mark TATA' were
available in every nook and corner of this country.

 P showed that House of Tata consisted of over 50 companies, out of which, about seven
are overseas companies and had an annual turnover of approximately Rs. 16,000/- crores.
 P was able to prove that D company’s products were likely to deceive or cause confusion,
and their trade mark was colourable imitation of the mark of the P.
 Even though D showed evidence of user and reputation in respect of pressure cookers
sold by them since 1981, their mark does not qualify for registration because TATA was
not the surname of partners of the D company. How these persons picked up the word
TATA as their trade mark remained a mystery.
 Section 12 of Trade Marks Act, 1991 states that in a special circumstance the Registrar
would allow one or more proprietor to use the same trade mark if the applicant for
registration can prove he is an honest concurrent user. Even though the D used the
trademark since 1981 he cannot register his trademark as it was not an honest user and
the taint could not be purified by continuous user.
Rule: The term "well-known trade mark" refers to a mark which has become so to the substantial
segment of the public which uses such goods or receives such services that the use of such mark
in relation to 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 in relation to the first mentioned goods or services.
Any trade mark with the status of a "well-known" substantially improves the extent of protection
available to it, as it provides the owner of the brand, the exclusive right to the trade mark against
all unlawful users, regardless of the differences in the field of business, goods or services. To
make action successful, it is required to be established that the adoption of the brand by the
unauthorized users is mala fide and without due cause.

Pepsi Co., Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr.
2003 (27) PTC 305 (Del)
Keywords: Infringement; Advertisement; Comparative Advertisement; Disparaging.
Facts: The appellants in this case were Pepsi Co Inc and they were suing the respondents,
Hindustan Coca Cola Ltd (henceforth Coca Cola) over a series of advertisements carried out by
the respondents. In some of these advertisements, a drink with the word PAPPI on its label with
a mark similar to the Pepsi’s globe mark was used in comparison to the respondent’s own drink.
The adverts proceeded like so: a child was asked by the protagonist to name his favourite drink,
to which the child responds saying that his favourite drink is Pepsi. At this point the audio is
bleeped out though, from the movement of the child’s lips it is evident that he is uttering the
word Pepsi. The child is then asked to perform a blind tasting of the two drinks and pick his
favourite out of the two. On making his selection, it is shown that the child picks the
respondent’s drink and the other drink is revealed to be PAPPI with a mark similar to that of
Pepsi. When asked for the reasons behind his choice, the child remarks that PAPPI is too sweet
and is something that only children would want to drink and shows embarrassment on learning
that he once called that his favourite drink. The adds also contained the lead actor saying “Wrong
choice baby” when the child initially states that Pepsi (bleeped out) is his favourite drink and
uttering the phrase “Yeh Dil Maange No More.”
The appellants alleged, that in another advertisement the respondents had copied a roller coaster
commercial that they had launched earlier and sought to receive an injunction on the alleged
copy. They also claimed that the use of the globe design and the phrase “Yeh Dil Maange No
More” amounted to trademark infringement while the nature of the respondent’s adverts
amounted to the disparaging of the appellant’s products.
Issues:
1) Whether prima facie the respondents have disparaged the products of the appellants;
2) Wwhether the globe devise and the phrase "Yeh Dil Maange More" is copy right-able
and if so whether this copy right has been infringed by the respondent;
3) Whether the essence of the roller coaster has been copied by the respondents and if so the
effect of the same.
Rule: Comparative advertising is permitted as long as it diesn’t discredit or denigrate the trade
mark or trade name of the competitor. Mere puffing of goods is not actionable. Tradesman can
say his goods are best or better. But by comparison the tradesman cannot slander nor defame the
goods of the competitor nor can call it bad or inferior. To decide the question of disparagement
following factors have to be kept in mind (1) Intent of commercial (2) Manner of the commercial
(3) Story line of the commercial and the message sought to be conveyed by the commercial.
Holding: With regards to the first issue, the Court found that the respondent’s advertisements
did, in fact, disparage the appellant’s products. In deciding this, the Court looked into the
following factors: (i) Intent of commercial (ii) Manner of the commercial (iii) Story line of the
commercial and the message sought to be conveyed by the commercial. They reasoned though
the word Pepsi had been censored in the commercial, a viewer could make out the word from the
movement of the actor’s mouth. Further, the use of the word PAPPI and the symbol similar to
Pepsi’s globe, clearly pointed to Pepsi as they were the only cola brand in the market that aligned
with these descriptions. The Court reasoned that the adverts amounted to disparage as they
clearly sent out the message that the appellant’s drink was an inferior one as it was too sweet and
something only children would drink as this affected the appellant’s market of adolescent and
adult consumers. Further, the actor’s apparent embarrassment on finding out that the sweet drink
is what he had initially claimed to like also indicates that being fond of the appellant’s drink is
something to be ashamed of. It is because of this negative portrayal of the competitor that the
adverts were not passed off as mere puffing and disparagement was held.
With regards to the second issue, the Court ruled that the nature of both the phrase and the globe
had to be deduced from the manner in which they are used. By this, both are trademarks of the
appellant and infringement, if any, has to be measured accordingly. Here the Court ruled that
there was no infringement as the respondents had not used either of these marks in the course of
their trade and, in that, were not in contravention with section 29(1) of the trade Marks Act.
With regards to the final issue, the Court applied the test laid down in R.G. Anand v. Deluxe
Film and found that apart from minor embellishments and changes, the essence of both the
adverts were the same. Hence, the respondents had violated the copyright of the appellants.
Therefore, the court grated the injunction with regards to the publication and screening of this
advertisement.

N.R. Dongre and Ors. v| Whirlpool Corpn. and Anr.
1996 (16) PTC 583 (SC)
Keywords: Passing off; Registered Trademark; Prior user; Misrepresentation; Damage;

Transborder reputation; Goodwill.
Facts: The respondents (initially plaintiffs) are the original and earlier users of trade mark
"WHIRLPOOL" for their electrical goods including washing machines since the year 1937. They
got their trademark registered in the year 1956-57 in India. These registrations were renewed
periodically. However, in 1977, the registrations in India lapsed on account of failure to apply for
renewal. Later in the year 1988 the appellants (initially defendants) applied with the Registrar of
Trade Marks for registration of the trade mark 'WHIRLPOOL' for certain goods including
washing machines. Post this application, information was released by advertising in the trade
mark journal and accordingly the respondents filed an objection. The registrar dismissed the
objection and allowed the plaintiff’s application for registration on the grounds of proposed user.
The respondents filed an action for passing off and grant of interlocutory injunction.
Procedural History: After the grant of registration to the appellants in the year 1992, the
respondents filed an action for passing off and grant of interlocutory injunction. Temporary
injunction was granted by the learned Single Judge of the Delhi High Court in an original suit by
order dated 31st October, 1994, which has been affirmed on appeal by the Division Bench by its
order dated 21.4.1995. Hence, aggrieved by the decision, the appeal was filed in the Supreme
Court.
Issue: Whether interlocutory injunction can be granted in a passing-off action even against the
proprietor of a registered trade mark?
Analysis: The Court noted that Whirlpool Corporation had been the prior user of the trademark
and were associated with it since the year 1937 whereas the appellants only applied for it in the
year 1988. The concept and principle on which passing off action is grounded is that a man is not
to sell his own goods under the pretense that they are the goods of another man. The Court
further observed that since the year 1937, Whirlpool Corporation has registered itself in 65
countries and has a large scale business. It was further noted that though Whirlpool products
were only sold in US embassy and few other United States offices in India but the brand
‘Whirlpool’ had been frequently advertised in leading international magazines having circulation
in India and as a result the brand was gaining reputation not just in United States but throughout
the world including India. As a result, Whirlpool Corporation acquired trans-border reputation
and goodwill throughout the world and people began associating washing machines and other
electronic goods with the trademark ‘Whirlpool’. It further noted that buyers were likely to be
deceived or confused as to the origin and source of the goods with appellants selling their goods
marked as ‘Whirlpool’ and as a result the respondents are likely to suffer irreparable injury as the

products sold by appellants were not of the same engineering standards and did not give the same
quality of performance as the respondents' machines.
Conclusion: The Court affirmed the order of the Division bench of the High Court and
dismissed the appeal. It noted that the decision of the trial court and the High Court was based on
settled principles of law. Therefore there was no ground to interfere with the grant of
interlocutory injunction.

Bollinger SA v. Costa Brava Wine Co. Ltd.
[1961] 1 W.L.R. 277
Keywords: Passing off; Good will; misrepresentation; Damage.

Facts: There were 12 plaintiffs duly incorporated in France, who carried on the business of
producing wine in the Champagne district of France, and supplied this wine to England and
Wales. The wine that came from these vineyards, were sold under the name “Champagne”, and
there was immense goodwill attached to this name and its brand of wines. This wine was made
through a detailed process, and was placed at a high standard in the United Kingdom, and was
mainly associated with celebratory occasions.
The defendants are a company incorporated in England, and were importing and selling a wine
named, “Spanish Champagne”. This Wine was alleged to possess some characteristics of the
“Champagne” produced in France. However, the Wine sold by the defendants was produced in
Spain, and is not associated in any way with the Champagne district of France. Consequent to the
common usage of the word “Champagne” in both products, a dispute arose between the two
parties.
Issue: Whether the Defendants’ usage of the Name or Mark intended to deceive or mislead the
public, thereby by amounting to passing off?
Rationale:
 The Defendants’ primary contention was that the wine they sold was “Spanish”
champagne, and therefore it could not have been mistaken for “Champagne” produced in
France.
 Although this was plausible, the Court recognized that this argument would
accommodate only the educated class of people, who are well versed with wines and are
generally accustomed with buying different products.
 In addition, the Court considered a large amount of evidence that concerned the term
“Champagne” in England. Most of the evidence obtained, suggested that “Champagne”
in England is always associated with the product of the plaintiffs and nothing else. The
evidence further suggested that the term “Champagne” in England is not generic, and is
related only to the Plaintiff’s product.
 On assessing whether the Defendants’ product “Spanish Champagne” was deceiving –
The Court opined that the resemblance between the two products was deceiving. As a
result, the usage of the word “Spanish” could not be used to deem both products
different.
 In addition, the Court opined that it is not easy for individuals to assess and have enough
knowledge about different types of wines and their origins. The Court stated that these
classes of individuals might have to make such decisions only when it comes to

celebratory occasions (wherein the Plaintiff’s product was more sought after). The
evidence, in this regard, suggested that not everyone was accustomed with different types
of wine. Therefore, it was stated that there is a likelihood of individuals being misled by
“Spanish Champagne” as “Champagne”.
 The Court also stated that the Plaintiffs had satisfied their burden of proof of showing
that the Defendants’ product reflects untrue statements.
 More importantly, the Respondents’ product was deceiving, as the Defendants’ product
was sold in Spain as “Perelada” and not “Spanish Champagne”. This created a serious
doubt as to why the Name was changed to “champagne” in the British Market, where the
Plaintiff’s product was widely recognized as “Champagne”. Additionally, the
Defendants’ brochure was blatantly trying to “secure the sale of the Plaintiff Company”,
as it stated, “Giving a Champagne Party”.
Rule: For the actions to be deceptive, a substantial portion of the public must be likely to be
misled by the defendants’ product “Spanish Champaign”.
Holding: It was held that this was not a case of innocent passing off, and the Defendants try to
attract the goodwill of the plaintiff’s company in a deliberate and dishonest manner.

Reckitt and Colman Products Ltd. v. Borden Ltd
[1990] 1 ALL E.R. 873 (House of Lords)
Keywords: Shapemarks; Passing off; Good will; Misrepresentation; Damage.
Facts: Reckitt and Colman Products Limited, the Plaintiff (hereinafter referred to as “P”), was a
lemon juice manufacturer and sold it in yellow containers having appearance similar to a natural
lemon and having a removable cap at one end. The product was generally known as “Jif Lemon
Juice” and attached to this container was a loose paper label of green color with “Jif” and other
statutory information written on it in yellow, held in place by the cap. P did not have any of its
marks registered as Trademark (T.M.), but had a monopoly in selling lemon juice in such
containers since more than 40 years in U.K..
Borden Inc., the Defendant (hereinafter referred to as “D”), started selling lemon juice with the
name “ReaLemon” in containers similar to that of the Respondent (i.e. lemon shaped and
colored). D produced three different versions of plastic lemon containers with minor changes in
size, colour of the cap, and colour pattern of the labels. Owing to D starting to sell lemon juice in
containers similar to that of P, P filed a suit for passing-off seeking to restrain D from selling.
Procedural History: P approached the Trail Court, which ruled in P’s favor. D approached the
Court of Appeals, which also ruled in P’s favor. D has now approached the House of Lords.
Issues:
1) Does the public associate lemon-shaped containers filled with lemon juice exclusively
with P?
2) Does the get-up under which D propose to market their lemon juice amounts to a
representation that the juice which they sell is "Jif" lemon juice?
3) If D are not restrained, will a substantial amount of public be misled into purchasing D’s
lemon juice in the belief that it is the P’s “Jif” juice?
Holding: Yes, D’s selling of lemon juice in lemon shaped containers constituted passing-off.
Permanent injunction was imposed on D from selling lemon juice in such containers.
Rationale:
The House of Lords applied the Three Part Test (Goodwill; Misrepresentation; Damage) to find
out whether D was passing-off its product as that of P. Each issue was dealt with separately as
explained below:
1) The House of Lords held that since P was the only player in the lemon-juice market who
was selling it in lemon-shaped containers, and since P had been exclusively doing it for

more than 40 years, such containers for lemon juice had become something people
associate exclusively with P.
2) The House of Court held that since lemon-shaped containers were exclusively associated
with P by the public, if D wanted to sell its product in similar containers, it should make
sure that people will not confuse its products with that of P. The Court held that the
change in color of label will not eliminate the confusion as the label is taken off once the
product is bought and therefore, the product is unadorned for the most part it is in use
with the customer. Therefore, an innocent customer will not remember how the label
looked like when he/she goes to buy it again and will only remember the shape and the
label us hardly paid any attention.
The court further held that a small change in the colour of the cap is not distinctive
enough to alarm the customer that the product they are buying is not “Jif Lemon Juice”,
therefore each of the get-ups proposed by D was just an immaterial variant of Jif Lemon
and would amount to misrepresentation.
3) D contended that people will eventually figure out that P was no longer the only player in
the lemon juice market with lemon-shaped containers and will start paying attention to
the labels and colour of caps. The House of Lords did not accept this argument and held
that the amount of people who will be initially misled before realizing this could be huge
and probably running into millions. Therefore if D are allowed to sell such products, it
would cause a substantial harm to P.
Thus, since all the three parts of the three-part test are met, the House of Lords held that the Trial
Court and the Court of Appeals was right in restraining D from selling lemon juice in containers
similar to that of P.
Rule: Passing-off: This rule essentially means that no person is to sell his/her goods under the
pretense that they are the goods of another person and applies in cases of unregistered
trademarks.
Three-Part Test: The Courts have developed a three-part test to find out if an action constitutes as
passing-off i.e. reputation and goodwill, misrepresentation, and damage. To establish a claim
under passing-off, the Plaintiff must prove:
1) that his goods/services have acquired a particular goodwill or reputation in association

with the “get-up” of the goods/services;
2) that the Defendant’s representation of his/her products is (or is likely to) mislead the
people who wish to buy Plaintiff’s product into buying Defendant’s product/service.
3) that he/she will suffer damages if the Defendant is allowed to continue with such a
representation.

T.V. Venugopal v. Ushodaya Enterprises Ltd
(2011) 4 SCC 85.
Keywords: Infringement; Passing off; Prior use; Good will; Dissimilar Goods; Descriptive
Marks; Acquired Distinctiveness; Secondary Meaning.
Facts: The appellant is the sole proprietor of a firm carrying on business inter alia as
manufacturers of and dealers in incense sticks (agarbathis) in the name and style of Ashika
Incense Incorporated at Bangalore and adopted the mark ‘Ashika's Eenadu’. According to the
appellant the word Èenadu' in Kannada language means `this land'. In Malayalam and Tamil
language it conveys the same meaning. In Telugu language it means ‘today’.
The respondent company (i.e. Ushodaya Enterprises ) was engaged in the business of publishing
a newspaper in Telugu entitled as ‘Eenadu’. The respondent company in the year 1999 filed a
suit for infringement of copyrights and passing-off trade mark. The respondent company therein
claimed that they have been in the business of publishing a newspaper, broadcasting, financing
and developing a film city.
Procedural History: The Second Additional Chief Judge, City Civil Court, Hyderabad had
granted an ex-parte ad interim injunction restraining the appellant from using the expression
Èenadu'. Thereafter, the appellant, aggrieved by the said order, moved the High Court of Andhra
Pradesh at Hyderabad. The High Court suspended the interim injunction. The appellant was not
injuncted from using the words Èenadu' in the entire country other than in the State of Andhra
Pradesh by the Trial Court. Aggrieved by the said order of the learned Single Judge, the
respondent company filed Letters Patent Appeals before the Division Bench of the High Court.
The High Court allowed its appeal.
Issues:
1) Whether the defendant is passing off the product of the plaintiff by deceiving and causing
confusion among the minds of the consumers by using the Mark Eenadu.
2) Whether Eenadu is a common word with generic interpretation literally meaing `Today'
in Telugu and `this land/our land' in Kannada, Tamil and Malayalam?
3) Whether the Mark is Suggestive or Descriptive and has it acquired distinctiveness?
4) Whether the use of mark Eenadu by the defendant would affect the goodwill of
respondent company as they both are involved in entirely different business.
Holding: The Court found that the respondent company's mark Èenadu' has acquired
extraordinary reputation and goodwill in the State of Andhra Pradesh. The respondent company's
products and services are correlated, identified and associated with the word Èenadu' in the
entire State of Andhra Pradesh. Èenadu' means literally the products or services provided by the

respondent company in the State of Andhra Pradesh. In this background the appellant cannot be
referred or termed as an honest concurrent user of the mark Èenadu'.
The adoption of the words Èenadu' is ex facie fraudulent and mala fide from the very inception.
By adopting the mark Èenadu' in the State of Andhra Pradesh, the appellant clearly wanted to
ride on the reputation and goodwill of the respondent company. The Court has clearly ruled on
the basis of dilution of the trademark “Eenadu” registered to the respondent. A trademark is
diluted when its uniqueness is lost owing to its unauthorised use in relation to products that are
not identical or similar to the product of the trademark owner.
Use of similar words by a competitor coupled with dishonest intentions and bad faith would
empower a court to restrain such user to do justice to the aggrieved party. The protection qua
common fields of activity has now been expanded and been interpreted to mean other product
lines than what is manufactures by plaintiff and hence common field of activity is not restricted
to same products. No one can be allowed to encroach upon the goodwill of other parties.
Applying the TWO STEP TEST to decide whether mark is descriptive of suggestive:
1) How much imagination does it takes by consumer about qualities, characteristics, effects,
purpose or ingredients of the products or source is there.
 More the imagination, more chances that the mark is suggestive.
Here, people in Andhra Pradesh are well aware about the relation between Eenadu Daily
newspaper and Eendau Margadasi Group. Eendau daily simply concludes that this may be a
news service only.
2) Whether sellers of similar products/services are likely to use or actually do use a term in
connection with their goods and services.
 Yes, it is likely to be used other sellers ex: AP Eenadu, Eenadu weekly, Eenadu’s
Exclusice, Real Eenadu, etc.
Hence it’s a descriptive mark
But, in our case, mark ‘Eenadu’ has acquired distinctiveness. It has acquired a secondary
meaning during the course of plaintiff’s business practice as the word Eenadu became the
household name among the people of Andhra Pradesh and the Telugu speaking public in the
other States and the rest of the world.

Case Briefs - IPR PDF

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Case Briefs - IPR PDF

Uploaded by

Copyright:

Available Formats

O. P.

Jindal Global University

Compilation © Amit Jyoti S. Gomber 2015

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 2

[1916 U. 119.] [1916] 2 Ch. 601

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 3

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 4

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 5

499 U.S. 340, Supreme Court of the United States of America

Keywords: Facts; compilation; originality; selection, arrangement and coordination; de

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 6

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 7

a) the collection and assembly of pre-existing materials, facts, or data;

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 8

Keywords: Method/ System/ Art; Copyrightable elements; Non-Copyrightable elements; Idea-

1) Did the D infringe the copyright?

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 9

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 10

(1978) 4 SCC 118: AIR 1978 SC 1613

Keywords: Substantiality test; Copyrightable elements; Non-Copyrightable elements;

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 11

1. “There can be no copyright in an idea, subject matter, themes, plots or historical or

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 12

45 F.2d 119 (2d Cir. 1930)

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 13

Keywords: Originality; Literary work; Modicum level of creativity; Derivative work;

Laws Involved: Sections 13, 14 and 52(1)(iv)(q), Copyright Act, 1957

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 14

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 15

[2004] 1 S.C.R. 339, 2004 SCC 13

Keywords: Originality; skill and judgment; infringement; defense – research.

1) Are the publishers’ materials “original works” protected by copyright?

2) Did the Great Library authorize copyright infringement by maintaining self-service

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 17

Rationale: Copyright existed in reports prepared by shorthand writers’ of public speeches as

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 18

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 19

Keywords: Originality; Substantiality; Infringement; Skill, Labour and Judgment; Minimum

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 21

Indian Performing Rights Society vs. Eastern India Motion Pictures

(AIR 1977 SC 1443)

IPRS PRODUCERS COMPOSERS/ LYRICIST

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 22

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 23

(2002) 63 DRJ 558

Laws involved: Section 57 of the Copyright Act.

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 24

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 25

(AIR 1987 Del 13)

 The assignee of a copyright cannot claim any rights or immunities based on a

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 26

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 27

2003 (5) BomCR 404

Keywords: Idea/ plot/ theme; copyrightable elements; Non-Copyrightable elements;

 The plaintiff No. 1 is a Company engaged in the business of television programming,

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 28

Plaintiff’s ‘Krish Kanhaiyya’ Defendant’s Kanhaiyya

Family is rich and dysfunctional Family is rich and dysfunctional

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 29

O. P. Jindal Global University | Compilation © - Amit Jyoti S. Gomber 2015 30

508 F.3d 1146

Keywords: Infringement; Fair Use standards.

Fair Use Analysis: