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1. E. I. Du Pont de Nemours v.

Christopher : Discloser of trade secret

20 July 1970

431 F.2d 1012

COURT

United States Court of Appeals for the Fifth Circuit

JUDICIAL HISTORY

5 June 1969, DuPont ( Plaintiff ) brought Trade Secret complaint against Rolfe and Gary Christopher (
Defendant ) in Texas District Court. Court granted Plaintiff motion for Defendant to divulge name of
their 3rd-party which requested the aerial photo recon. Court also granted Defendant motion for
Interlocutory Appeal ( civil procedure law by which an appeal of court ruling is made before all claims
are resolved to all parties involved ), to secure immediate appellate review of court ruling on DuPont
stated a valid claim by which relief could be granted. Case appealed to US Court of Appeals for the Fifth
Circuit.

FACTS

19 March 1969, Rolfe and Gary Christopher was hired by unknown 3rd-party to conduct aerial
photographic reconnaissance of the new DuPont chemical manufacturing plant still being constructed in
Beaumont-Texas, of which 16 photos were taken, developed, and later delivered to the 3rd-party.

On day of this aerial recon, DuPont plant employees noticed an airplane circling the plant construction
site and initiated an investigation, which led them to Rolfe and Gary Christopher as the airplane
operators in this photo expedition, both of which refused DuPont's request to reveal the identity of the
3rd-party. Thereupon, DuPont filed suit against the two men for wrongfully obtained photographs
revealing company's Trade Secrets in methanol manufacturing plant design.

ISSUES :

1) Can a party avoid charge of securing Trade Secret via Improper Means so long as actions taken in the
public realm, no explicit laws were broken, and no confidential agreement was signed

2) Must a Trade Secret owner anticipate all aspects of industrial espionage to execute due diligence its
protection ?

HOLDINGS :

1) No. Improper Means is defined as one who discloses or utilize another Trade Secret without the
privilege to do so. Therefore, with the Trade Secret owner having taken affirmative and appropriate
protection of its secret, regardless actions taken in the public realm, such discovery and revelation
amounts to breach of confidence by the party disclosing this secret to another 3rd-party. Thus, violate
standards of higher commercial morality.

2) No. So long as the Trade Secret owner have taken reasonable protection of its secret, it is not legally
obliged to guard against all unanticipated, undetectable, or unpreventable acts of espionage.

REASONING

Following the dictum that Legality alone should not be used to masquerade illicit or malicious
intentional acts, for this Interlocutory Appeal under 28 USC 1292(b) statute, Appellate Court upheld
District Court decision that Plaintiff possessed a valid cause of action to prohibit Defendants from
improperly discovering its Trade Secret manufacturing plant construction layout via aerial recon
photography.

Court concentrated on Trade Secret definition that : "One who discloses or uses another's trade secret,
without a privilege to do so, is liable to the other if (a) he discovered the secret by improper means, or
(b) his disclosure or use constitutes a breach of confidence reposed in him by the other in disclosing the
secret to him"

Therefore, regardless of Defendant claims that its recon overflight was conducted in public airspace,
violated no government aviation standards, breached no explicit confidentiality agreement, and not
engaged in fraudulent or illegal conduct the Court determined otherwise that "Improper Means" is to
"recognize and enforce higher standards of commercial morality in the business world".

Defendant was attempting to secure secret competitive information concerning specific industrial plant
design which undergoing proper inspection, discovery, and reverse engineering process to create a
duplicate. Thus, attempted to secure this knowledge "paying the price expended by the discoverer".

Thus, usage of aerial photo recon is an illicit act "even though they do not cause any other harm than
that to the interest in the trade secret". Although the Plaintiff may erect fences and roofs to "shut out
incursive eyes", but the Court does only requires the Trade Secret owner act with due diligence in
protection, and not "guard against the unanticipated, the undetectable, or the unpreventable methods
of espionage available".

For to require Plaintiff DuPont to "put a roof over the unfinished plant to guard its secret would impose
an enormous expense to prevent nothing more than a school boy's trick"

DECISION

Court affirmed District Court decision that Plaintiff had stated claim for Trade Secret misappropriation,
and that aerial recon photography was an Improper Means of discovering stated Trade Secret.
2. Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd. AIR 2004 SC 3540

FACTS

The Respondent (Sifynet Solutions (P) Ltd.) had registered domain


names http://www.siffynet.comand http://www.siffynet.net which were similar to the Plaintiffs
domain name http://www.sifynet.com. Appellant (Satyam Infoway Ltd.) had considerable reputation in
the market and had registered the name Sifynet and various other names with the Internet
Corporation for Assigned Names (ICANN) and WIPO. The word Sify was first coined by the plaintiff
using elements from its corporate name Satyam Infoway and had a very wide reputation and goodwill in
the market. The Appellant was incorporated in the year 1995 and had registered its various domain
names using the prefix Sify in the year 1999. The Respondent started carrying on its business under the
above stated domain names since 5th June, 2001.

On coming to know of use of the word Siffy by the Respondent, the Appellant filed a suit in the City
Civil Court against the Respondent on the basis that the Respondent was passing off its business and
services by using the appellants business name and domain name. An application for temporary
injunction was also filed.

The City Civil Court Judge decided in favour of appellants and allowed the application for temporary
injunction on the following grounds:

Appellant was the prior user of the trade name Sify;

Appellant had earned good reputation in connection with the internet and computer services
under the name Sify, and

Respondents domain names were similar to the domain name of the appellant and that
confusion would have been caused in the mind of the general public by use of such deceptive
similarity.

Aggrieved by the decision of the City Civil Court, the Respondent approached, the High Court, which
reversed the order of the City Civil Court, on the following grounds:

The balance of convenience was in favour of the Respondent;

The business of the Appellant and Respondent was dissimilar;

The Respondent had invested a large amount in establishing its business and has enrolled
50,000 members,

The Respondent would be put to greater hardship, inconvenience and irreparable injury.

Hence, the Appellant filed a Special Leave Petition before the Supreme Court.
ISSUES:

1) Whether a domain name can be said to be a word or name which is capable of distinguishing the
subject of trade or service made available to potential users of the internet.

2) Whether internet domain names are subject to the legal norms applicable to other intellectual
properties such as trademarks.

3) Would the principles of trademark law and in particular those relating to passing off apply?

HELD

ISSUE NO. 1

Issue No. 1 was answered in the affirmative and to come to the such conclusion, the Honble Supreme
Court gave the following reasons:

With the increase of commercial activity on the internet, a domain name is also used as a
business identifier;

Domain name identifies the specific internet site;

As more and more commercial enterprises trade or advertise their presence on the web,
domain names have become more and more valuable and the potential for dispute is high.
Whereas a large number of trademarks containing the same name can comfortably co-exist
because they are associated with different products, belong to business in different jurisdictions
etc, the distinctive nature of the domain name providing global exclusivity is much sought after,

The fact that many consumers searching for a particular site are likely, in the first place, to try
and guess its domain name has further enhanced this value.

ISSUE NO. 2 & 3

Issue No. 2 & 3 were commonly answered in the affirmative as they were interlinked and to come to the
said conclusion, the Honble Supreme Court gave the following reasons:

The use of similar domain name may lead to diversion of users as ordinary customers seeking to
locate the functions available under one domain name may be confused with another domain
name which may offer dissimilar services. Thus, the customers may conclude misrepresentation,
which will result in loss of customers.

Further, a use of similar domain name has all the ingredients of a passing off action, such as
preservation of reputation and goodwill, safeguarding the public, misrepresentation by the
defendant, loss or likelihood of loss. Thus, the Honble Supreme Court held that that a domain
name may have all the characteristics of a trade mark and one can also file an action for passing
for the same.
ON MERITS/FACTS

The matter was ruled in favour of the Appellant, on the following grounds:

Appellant has lots of reputation and goodwill in the mark Sify

(Basis: 5 lac subscribers, 840 cyber cafes, 54 points of presence all over India, first Indian Co. To be listed
in NASDAQ, extensive coverage in leading national newspapers, sales figures, expenses incurred on
advertisement of the mark Sify, 40 Registered Trade Marks, with the prefix Sify)

There is close visual similarity and phonetic similarity between Sify and Siffy and there is a
likelihood of confusion.

No proper justification by the Respondent, as to its adoption of Siffy.

Appellant was a prior adopter and prior user.

The argument of separate business stood negated on account of exclusivity of domain name
symbol which is accessible to all internet users as well as on account of the fact that there were
documents to the effect that the Respondent had advertised to be provider of software
solution, software development, Intranet and Extranet solutions, etc.

The Balance of Convenience was also held to be in favour of the Appellant as it was a prior user
and the public associated the mark Sify with the Appellant

3. Case: Turmeric Patent on Traditional Knowledge Commented [u1]: Section 102(a) (a)Novelty; Prior Art.A
person shall be entitled to a patent unless
(1)
Turmeric is a tropical herb grown in east India. Turmeric powder is widely used in India as a the claimed invention was patented, described in a printed
medicine, a food ingredient and a dye to name a few of its uses 3. For instance, it is used as a blood publication, or in public use, on sale, or otherwise available to the
public before the effective filing date of the claimed invention; or
purifier, in treating the common cold, and as an anti-parasitic for many skin infections. It is also used as (2)
an essential ingredient in cooking many Indian dishes. In 1995, the United States awarded patent on the claimed invention was described in a patent issued under
section 151, or in an application for patent published or deemed
turmeric to University of Mississippi medical center for wound healing property. The claimed subject published under section 122(b), in which the patent or application,
as the case may be, names another inventor and was effectively
matter was the use of "turmeric powder and its administration", both oral as well as topical, for wound filed before the effective filing date of the claimed invention.
healing. An exclusive right has been granted to sell and distribute. The Indian Council for Scientific and
Industrial Research (CSIR) had objected to the patent granted and provided documented evidences of
the prior art to USPTO United States Patent and Trademark Office. Though it was a well known fact that
the use of turmeric was known in every household since ages in India, it was a herculean task to find
published information on the use of turmeric powder through oral as well as topical route for wound
healing. Due to extensive researches, 32 references were located in different languages namely Sanskrit,
Urdu and Hindi. Therefore, the

USPTO revoked the patent, stating that the claims made in the patent were obvious and anticipated,
and agreeing that the use of turmeric was an old art of healing wounds. Therefore, the TK that belonged
to India was safeguarded in Turmeric case.
4. Citation. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S. Ct. Commented [u2]: Section 3 of the Indian patent act
Combination of the known element
127, 95 L. Ed. 162, 1950 U.S. LEXIS 2604, 87 U.S.P.Q. (BNA) 303 (U.S. Dec. 4, 1950) The way you combine them

Brief Fact Summary. Great A. & P. (Plaintiff) brought suit against Supermarket (Defendant) claiming
infringement of its patent on a rack to move groceries along a grocery store counter to the casher.

Synopsis of Rule of Law. Portions of prior art that are merely brought together by a patentee, without
any change in their particular functions, do not make a valid patent.

Facts. The device patented by Plaintiff equipped cashiers" counters with a three-sided frame that moved
the groceries along to the cashier by being pushed or pulled when the customer put their groceries
within it. The district court denied Defendant"s claim that the device was obvious and therefore could
not be the subject of a patent, must less an infringement suit. The court found it was an original
feature, and consisted of a new and useful combination of a counter with an extension to receive the
items that were placed upon a bottomless self-unloading tray. The judgment was upheld by the court of
appeals regarding the finding of the district court as to obviousness as one of fact and not clearly
incorrect.

Issue. If portions of prior art are merely brought together by a patentee, without any change in their
particular functions, will the patent be sustained?

Held. (Jackson, J.) No. If portions of prior art are merely brought together by a patentee, without any
change in their particular functions, the patent will not be sustained. The combination of known
elements must contribute something; only when in some way the whole exceeds the sum of its parts is
the combination of old devices eligible for patent. In this case, each part is doing what it has always
done. The counter supports merchandise; the rack draws or pushes goods; and the guide rails keep the
goods from falling off the surface. When two and two are added together, the total is still four. The
Plaintiff"s patents have not added anything new to the total stock of knowledge, but merely brought
together parts of prior art claiming them in working together a monopoly. The patents are invalid and
judgment is reversed.

Concurrence. (Douglas, J.) Because a patent is a monopoly, the Framers did not want such monopolies
to be freely granted. An invention may be new and useful, but it must also make a notable contribution
to scientific knowledge and demonstrate "inventive genius.

Discussion. It may be argued that almost every invention can be reduced to the combination of old
elements and cleverly recognizing the usefulness of such combinations, not just the different functioning
of the elements within the combination. After Great A. & P., Congress passed the 1952 Patent Act,
which codified the prerequisites to being granted a patent, without any reference to "invention" as a
legal requirement.

6. Calman vs Loo Chemical Co. Commented [u3]: Inventive step:


1. solution to specific problem
Number of unsucceful attempt
Solution to the problem
Commercial success
5. Citation. Graham v. John Deere Co., 383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545, 1966 U.S. LEXIS
2908, 148 U.S.P.Q. (BNA) 459 (U.S. Feb. 21, 1966)

Brief Fact Summary. John Deere (Defendant) defended an infringement action on grounds of
obviousness. Commented [u4]: Test of no obviousness

Synopsis of Rule of Law. A case-by-case analysis of the scope and content of the prior art, the
differences between the prior art and the claims at issue, as well as the level of ordinary skill in the
applicable art, are required to determine the non-obviousness of a claimed invention as to a prior art.

Facts. Graham (Plaintiff) filed suit against Defendant claiming patent infringement on a device which
consisted of old mechanical elements that absorbed shock from plow shanks as they plowed through
rocky soil. In a prior case, The Fifth Circuit held that a patent was valid, ruling that a combination was
eligible for patent when it produced an "old result in a cheaper and otherwise more advantageous
way." The Eighth Circuit said the patent was invalid in the present case as there was no new result or
combination. Plaintiff petitioned for certiorari, and the Supreme Court granted the request in order to
resolve the conflict.

Issue. Is a case-by-case analysis required of the scope and content of the prior art, the differences
between the prior art and the claims at issue, as well as the level of ordinary skill in the applicable art to
determine the non-obviousness of a claimed invention as to prior art?

Held. (Clark, J.) Yes. A case-by-case analysis of the scope and content of the prior art, the differences
between the prior art and the claims at issue, as well as the level of ordinary skill in the applicable art
are required to determine the non-obviousness of a claimed invention as to a prior art. The statutory
non-obviousness requirement was added by the Patent Act of 1952. However, this was just a
codification of the judicial precedent set forth in Hotchkiss v. Greenwood, 11 How. 248 (1851).
Although the term "non-obviousness" is used instead of "invention," in 103 of the Act, the general
level of improvement and originality needed in order to sustain a patent did not change. In order to
determine whether an invention is eligible for patent or is only an obvious improvement to a prior art
requires a case-by-case analysis of the criteria listed above. Commercial success, long-felt but unsolved
needs, and the failure of others are secondary considerations that may also be relevant in considering
the obviousness of an invention. Regarding the patent at issue in these cases, the differences between
the patented invention and prior art would have been obvious to one reasonably skilled in the art. The
patent is therefore invalid. Affirmed.

Discussion. Dissatisfaction with the Supreme Court"s increasingly strict standard of "invention" led to
the writing of the 1952 Patent Act. There was also much criticism regarding the application of the test
which led to different judicial decisions with subjective and inconsistent determinations. Congress
omitted the word "invention" in the Act on purpose so that no past requirements would be referred to.
Instead, Congress codified the hundreds of different ways the case law doctrine had been read into a
single statutory form. However, judicial interpretation of this Act was still open to question, as shown in
the above decision.
6. Hollister v. Benedict & Burnham Mfg. Co., 113 U.S. 59 (1885), was a bill regarding alleged
infringement on a patent issued to Edward A. Locke for specific improvements in
identifying revenue marks or labels. The defendants were assignees of the patentee, and
the plaintiff was the collector of internal revenue for the Second collection district of
Connecticut.[1]

The patent was for a device that was designed specifically for sealing liquor casks with
identifying marks or labels for tax purposes and for identifying the contents of the cask, and any
other pertitent information. It was designed so that the marks and labels could not be
fraudulently removed. There were two pieces, one to be retained by the government, the other
meant to stay affixed to the cask.

In 1875 new regulations in regard to the use of tax-paid stamps, by which a portion of the
stamp is cut out at the time of dumping and returned with the gauger's report, was adopted.
This method effectually destroys the stamp and prevents its reuse, while, at the same time, a
sufficient mount of the engraving is shown upon the slip to determine whether the stamp is
genuine. It was believed that this system afforded the government an effective means of
protection against fraud in connection with the collection of distilled spirit taxes.

The court observed that while there was an increased utility beyond previous devices, there
was no observable change in the character of the stamp, the identifying marks, nor the purpose
of destroying the stamp while retaining the evidence of the stamp's purpose and "seems to us
not to spring from that intuitive faculty of the mind put forth in the search for new results or
new methods, creating what had not before existed, or bringing to light what lay hidden from
vision; but, on the other hand, to be the suggestion of that common experience which arose
spontaneously, and by a necessity of human reasoning, in the minds of those who had become
acquainted with the circumstances with which they had to deal."

"Cutting out a portion of the stamp, as a means of defacing and mutilating it so as to prevent a
second use, was matter of common knowledge and practice before the date of this patent; and Commented [u5]: TEACHING SUGGESTION METHOD

cutting out a particular portion on which the identifying marks had been previously written or
printed was simply cutting a stub from the stamp instead of cutting the stamp from the stub, as
before."

The court mentioned a flaw in the system whereby frauds were committed by the "removal of
tax-paid stamps from packages on which they had been originally placed by the officer to
others surreptitiously substituted for them, or by emptying the packages of their original
contents and fraudulently refilling them with spirits on which had not been paid, attracted the
general attention of the revenue department, the answer to the problem of prevention was
found by immediate inference from the existing regulations, in the adoption of the expedient
now in question."

"As soon as the mischief became apparent, and the remedy was seriously and systematically
studied by those competent to deal with the subject, the present regulation was promptly
suggested and adopted; just as a skilled mechanic, witnessing the performance of a machine,
inadequate by reason of some defect, to accomplish the object for which it had been designed,
by the application of his common knowledge and experience perceives the reason of the failure
and supplies what is obviously wanting. It is but the display of the expected skill of the calling,
and involves only the exercise of the ordinary faculties of reasoning upon the materials supplied
by a special knowledge, and the facility of manipulation which results from its habitual and
intelligent practice; and is in no sense the creative work of that inventive faculty which it is the
purpose of the constitution and the patent laws to encourage and reward. On this ground the
decree of the circuit court is reversed, and the cause remanded, with directions to enter a
decree dismissing the bill; and it is so ordered."

7. Citation. KSR Intl Co. v. Teleflex Inc., 550 U.S. Commented [u6]: Inventive step and non-obviousness

Rulling against the hollistor case


Brief Fact Summary. Teleflex, Inc. (Plaintiff) brought suit against KSR International Co. (KSR)
(Defendant) for patent infringement based on KSRs (Defendant) addition of an electronic
sensor to an existing pedal design. Defendant argued the addition was obvious, so Plaintiffs
patent claim was invalid.
Synopsis of Rule of Law. When determining a patent claims obviousness, the courts must Commented [u7]: 1. In determining whether the subject matter
of a patent claim is obvious, neither the particular motivation nor
consider the prior art, the differences between the prior art and the subject matter of the the avowed purpose of the patentee controls. What matters is the
objective reach of the claim. If the claim extends to what is obvious,
claim, and the level of ordinary skill a person must have in the subject matter of the claim it is invalid under 103. One of the ways in which a patent's subject
before secondary factors and the test for teaching, suggestion, or motivation of the patentee matter can be proved obvious is by noting that there existed at the
time of invention a known problem for which there was an obvious
are considered. solution encompassed by the patent's claims.
2. "[the] nonobviousness principle asks whether the invention is an
adequate distance beyond or above the state of the art".[
Facts. Teleflex, Inc. (Plaintiff) held the exclusive license to the patent entitled Adjustable Pedal "normal product design and development",
Assembly with Electronic Throttle Control. One claim of the patent involved the addition of an Commented [u8]: HOW THE PRIOR ART IS DETRMINDED BY
THE COURT
electronic sensor to the pedal that then transmitted information to the computer that controls
Commented [u9]: TSM Method CAME FROM ACS Hosp. Sys.,
the engines throttle. KSR International Co. (KSR) (Defendant) added an electronic sensor to its Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)
existing pedal design. Teleflex (Plaintiff) sued KSR (Defendant) for patent infringement. Refer: https://en.wikipedia.org/wiki/Inventive_step_and_non-
Defendant argued the Plaintiffs claim was invalid under 35 U.S.C. 103 because the addition of obviousness#Teaching-suggestion-motivation_test

the electronic sensor was obvious. The district court granted judgment to Defendant and
Plaintiff appealed. The court of appeals applied the teaching, suggestion, or motivation (TSM)
test and reversed. KSR (Defendant) filed for a writ of certiorari, which the United States
Supreme Court granted to address the obviousness analysis.
Issue. When determining a patent claims obviousness, must the courts consider the prior art,
the differences between the prior art and the subject matter of the claim, and the level of
ordinary skill a person must have in the subject matter of the claim before secondary factors
and the test for teaching, suggestion, or motivation of the patentee are considered?

Held. (Kennedy, J.) Yes. When determining a patent claims obviousness, the courts must
consider the prior art, the differences between the prior art and the subject matter of the
claim, and the level of ordinary skill a person must have in the subject matter of the claim
before secondary factors and the test for teaching, suggestion, or motivation of the patentee
are considered. 35 U.S.C. 103 prohibits issuance of a patent when the subject matter as a
whole is obvious to a person with ordinary skill in the art to which the subject matter pertains.
[The Court reviewed the prior art of pedal and sensor technology.] The U.S. Patent and
Trademark Office (PTO) rejected a prior patent application for a pedal technology that, unlike
the Teleflex (Plaintiff) licensed patent at issue, did not involve a fixed pivot point because the
technology was obvious. The Teleflex (Plaintiff) licensed patent at issue here, did not involve
a fixed pivot point as the technology was obvious. The Plaintiffs licensed patent was granted
because of the limitation of the fixed pivot point. The district court considered the prior art,
examined the differences between the patent claim and the prior art, and then found the skill
level to be that of a mechanical engineer familiar with pedal designs. The district court found
little difference between the prior art and the patent claim and no secondary factors sufficient
to overcome the obviousness. The district court then applied the TSM test and found
Defendant satisfied it because the industry inevitably led to the combination of electronic
sensors and adjustable pedals plus the prior art suggested the combination. The court of
appeals reversed on the ground that the district court was not strictly applying the TSM test.
The appellate court looked at the purpose of the two pedal designs and found them to be
different. The appellate court also held that obvious to try the pedal and sensor combination
did not rise to the level of obviousness. The precedents of this Court reflect a broader, more
general inquiry into obviousness. The TSM test encourages the PTO to consider the reason a
person of ordinary skill in the field combined two known elements in such a way to result in a
potentially new patent subject matter. The general principle of the TSM test cannot be applied
rigidly. The appellate court cannot consider only the motivation for the joining of two known
elements because the joining may have been obvious to the patentee but that does not make
the claim obvious under 103. The appellate court also wrongly asserted that a person of
ordinary skill might not put known elements together in a new fashion even when those
elements were designed to individually accomplish a specific, alternate purpose. Finally, the
appellate court erred in stating obvious to try was not obvious because sometimes it might
rise to that level if a known problem has a finite number of solutions. In consideration of the
facts here, the patent does rise to the level of obviousness [The Court considered the prior art
and differences between the claims.] The district court appropriately and carefully applied this
Courts precedent and the statutory elements of 103 when determining the patent claim was
obvious and therefore invalid. The court of appeals erred in applying too rigid a TSM test.
Reversed and remanded.

Discussion. The Supreme Court ignored the federal circuits well-established precedent
applying the TSM test although it retained the Graham v. John Deere Co., 383 U.S. 1 (1966),
elements for applying 103 to a patent application. The impact of the decision, however, may
be felt more by electrical and mechanical patent applicants than other applicants. The
examiners can review the individual electrical/mechanical parts of the prior art to determine if
the new claim would have been an obvious result even if it had not been accomplished
previously.

8. Citation. Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204, 65 L. Ed. 2d 144, 1980
U.S. LEXIS 112, 206 U.S.P.Q. (BNA) 193 (U.S. June 16, 1980) Commented [u10]: The TRIPS Agreement requires a review of
Article 27.3(b), which deals with whether plant and animal
inventions should be covered by patents, and how to protect new
Brief Fact Summary. plant varieties.
The discussion now has an additional focus. Paragraph 19 of the
2001 Doha Declaration says the TRIPS Council should also look at
Chakrabarty (Plaintiff) sought to patent a live, man-made microorganism. the relationship between the TRIPS Agreement and the UN
Convention on Biological Diversity and at the protection of
Synopsis of Rule of Law. traditional knowledge and folklore. Most recently discussed are
proposals on disclosing the source of biological material and
associated traditional knowledge
A live, man-made microorganism is a non-naturally occurring composition and therefore may
but micro-organisms, and non-biological and microbiological
be patented. processes have to be eligible for patents

Facts. In Ciba Geiggs case EPO granted a patent for genetic modified
plant seeds
Chakrabarty (Plaintiff) developed a new species of bacterium capable of metabolizing
hydrocarbons in a manner unknown in naturally occurring organisms using recombinant DNA The US patent office granted a patent on Oncomouse/ Harvard
mouse, a non natural animal, which was beneficial in cancer
processes. The microorganisms exhibited great promise in the treatment of oil spills. Plaintiff research. Subsequently, the European Patent Office also granted
a patent on the same.
applied for a patent, which was denied by the Patent Office (Defendant) on the basis that the
microorganisms were products of nature and therefore unpatentable. The Board of Appeals
affirmed. The Court of Customs and Patent Appeals reversed, and the United States Supreme
Court granted review.

Issue.

May a live, man-made microorganism be patented?

Held. (Burger, C.J.) Yes. A live, man-made microorganism is a non-naturally occurring


composition and therefore may be patented. Resolution of this issue is, regardless of its
philosophical implications, strictly a matter of statutory construction. The relevant statute
here, 35 U.S.C. 101, defines as patentable any new and useful manufacture or composition
of matter, among other things. It is a basic rule of construction that words are given their
natural, ordinary meanings. There can be little doubt that microorganisms produced by
recombinant DNA technology may be said to be manufactured and to be compositions of
matter. For purposes of patent law, the fact they are alive is not relevant. Although it is true
that naturally-occurring products may not be patented, a genetically-engineered
microorganism is not naturally occurring. While this Court recognizes that recombinant DNA
technology is a controversial field, it is ill-equipped to balance the competing values and
interests manifested therein; this is a task for Congress. Since the patent laws clearly include
materials such as are at issue here within their scope, and no specific law exists to exclude it,
the only appropriate holding is that recombinant DNA-produced microorganisms are
patentable. Affirmed.

Dissent.

(Brennan, J.) Congress, in enacting the Plant Patent Act in 1930 and the Plant Variety
Protection Act in 1970, has indicated that bacteria are excluded from patentability. Patent
protection must not be extended further than Congress intended. Congress has not left a
legislative vacuum regarding the type of patent at issue. The Plant Patent Act gives patent
protection to developers of certain asexually reproduced plants. The Plant Variety Protection
Act extends protection to certain new plant varieties capable of sexual reproduction.
Therefore, contrary to the majoritys assertion, the patent at issue does not pose the problem
of unanticipated inventions. In these two Acts, Congress has addressed the general problem
of patenting animate inventions and has chosen carefully limited language granting protection
to some kinds of discoveries, but specifically excluding others. These Acts show strong
evidence of a congressional limitation that excludes bacteria from patentability. The Acts
evidence Congresss understanding, at least since 1930, that 101 does not include living
organisms. If newly developed living organisms not naturally occurring had been patentable
under 101, the plants included in the scope of the 1930 and 1970 Acts could have been
patented without new legislation. Therefore, Congress believed that it had to legislate in order
to make agricultural human-made inventions patentable, and, because the legislation
Congress enacted is limited, it follows that Congress never intended to make items outside the
scope of the legislation patentable.

Discussion.

The general rule is that things occurring naturally in the universe may not be patented. Neither
a type of plant occurring naturally nor a natural principal could be patented. The laws of
motion could not have been patented by Newton. This legal principle appears straightforward,
but as demonstrated by this case, modern science has made it less so.
ENABLEMET DISCLOSER BEST MODE CLAIM (SPECIFICATION)

9. Synthon BV v SmithKline Beecham plc Commented [u11]: Section 10 of the IPR


Written description and enablement

Reference [2005] UKHL 59; [2006] 1 All ER 685; [2006] RPC 10; (2005) 86 BMLR 130
Court House of Lords

Judge Lord Bingham of Cornhill, Lord Hoffmann, Lord Walker of Gestingthorpe, Baroness Hale
of Richmond, Lord Brown of Eaton-under-Heywood

Date of Judgment 20 Oct 2005

Summary

Patents Enabling disclosure Novelty State of the art Patent invalid by reason of prior Commented [u12]: Sufficiency of disclosure or enablement is
a patent law requirement according to which a patent
disclosure which, if performed, would infringe the patent Anti-depressants Crystalline form application must disclose a claimed invention in sufficient detail for
the notional person skilled in the art to carry out that claimed
Patents Act 1977, ss. 1, 2, 3, 5 and 14 invention. The requirement is fundamental to patent law: a
monopoly is granted for a given period of time in exchange for a
disclosure to the public how to make or practice the invention.

Facts

The case is about Paroxetine, a compound used to treat depression and related disorders. It
had for some time been marketed in the form of its hydrochloride hemihydrate salt under the
name Paxil or Seroxat.

The proceedings arose out of the more or less simultaneous discovery in about 1997 by the
appellants Synthon BV, a Dutch pharmaceutical company, and the respondents, Smithkline Commented [u13]: On 7 March 2001 Synthon commenced
proceedings to have SBs patent for crystalline paroxetine
Beecham plc (SB), a UK pharmaceutical company, that a different paroxetine salt, paroxetine methansulfonate (PMS) revoked on the ground that it was invalid
for lack of novelty, relying on their own earlier patent application
methanesulfonate (PMS), had properties which made it more suitable for pharmaceutical and section 2(3) of the Patents Act 1977.
use. It was more stable, less hygroscopic and much more soluble, so that it could be prepared in
higher concentrations.

After Synthon had filed its application but before it was published, SB filed a document dated 6
October 1998 which gave it priority for a UK patent application filed on 23 April 1999. The
patent was published on 10 May 2000. On 7 March 2001 Synthon commenced proceedings to
have the SB patent revoked.

Issue
The case explains how it comes about that the state of the art involves both disclosure and
enablement.

Summary

The House of Lords on Thursday unanimously allowed Synthon BVs (Synthon) appeal for the
revocation of Smithkline Beecham plcs (SB) patent for the methane sulfonate salt of
paroxetine. Heavily criticising the Court of Appeals judgment, Lord Hoffman, giving the
principal statement, found that on considering the concept of enabling disclosure in a patent
specification a clear distinction should be made between the disclosure element and the
enablement requirement. He further highlighted the fact that although for the purposes of
assessing disclosure the prior inventor must be clearly shown to have planted his flag at the
precise destination before the patentee[1] on considering enablement, particularly in cases
concerning complex technology, one should have regard to what an ordinary skilled man in the
art might consider trying in attempting to replicate the disclosed material.

Background

On 7 March 2001 Synthon commenced proceedings to have SBs patent for crystalline
paroxetine methansulfonate (PMS) revoked on the ground that it was invalid for lack of
novelty, relying on their own earlier patent application and section 2(3) of the Patents Act 1977.

Section 2(3) provides that, for the purposes of novelty only, the state of the art may include
matter contained in an application for another patent which was published on or after the
priority date of that invention, if (a) that matter was contained in the application for that
other patent both as filed and as published; and (b) the priority date of that matter is earlier
than that of the invention.

PMS is a salt of paroxetine, a drug that has been commonly used, in its hydrochloride
hemihydrate salt form, to treat depression and known commonly as Seroxat and Paxil. PMS has
properties making it more suitable for pharmaceutical use than the hydrochloride hemihydrate
form as it is more stable, less hygroscopic and much more soluble.

On 10 June 1997 Synthon filed an international application for a patent claiming a broad class
of sulfonic acid salts including PMS, which was specifically mentioned by way of an example.
The application was published on 17 December 1998.

On 6 October 1998 SB filed a document in the UK, giving it that priority date, and later filed a
patent application on 23 April 1999 for PMS based on that priority filing. It was the validity of
this patent that was in issue in the case.
The case went before Jacob J who on the 3 December 2002 revoked the patent. Jacob J
concluded that Synthons patent disclosed the existence of PMS in the crystalline form specified
in SBs patent, that crystalline PMS was monomorphic (having only one possible crystalline
form) and that the ordinary skilled man in the art would be able to reproduce crystalline PMS
as claimed in SBs patent.

SB appealed the decision.

Court of Appeal decision

On 25 June 2003 the Court of Appeal overturned Jacob Js decision, Aldous LJ distinguishing
Synthons and SBs disclosures: the [SB patent] is directed at PMS, whereas the [Synthon
application] is directed at a large number of compounds both in the general statements and in
the preferred form. Second, the general statements as to how PMS can be obtained differ from
those relating to the compounds in the application. Third, the examples in the patent give
detailed instructions as to how crystalline PMS can be made, whereas the equivalent example
in the application does not work. Fourth, the patent claims a different crystalline form of PMS
to that described in the application.[2]

On considering the expert evidence Aldous LJ added that the crucial question was not whether
the skilled addressee would expect success, but whether the application made available PMS as
claimed Once it had been established that [the PMS example in the Synthon application] did
not disclose a successful route to PMS as claimed in the patent, the skilled addressee might
have adopted obvious modifications. But such an approach is not permissible when considering
novelty concluding that the disclosure in the application does not make the PMS claimed
available to the public.[3]

The case was then referred by Synthon to the House of Lords.

House of Lords judgment

The House of Lords unanimously overturned the Court of Appeals verdict and revoked SBs
patent. Lord Hoffman, giving the main judgment, heavily criticised the Court of Appeals
judgment.

Lord Hoffmans principal criticism was of Aldous LJs lack of clarity and distinction between the
two requirements for anticipation prior disclosure and enablement. Making clear that the
two concepts should be considered separately, he briefly analysed the relevant case law noting
that although for the purposes of disclosure
the matter relied upon as prior art must disclose subject-matter which, if performed, would
necessarily result in an infringement of the patent[4] this does not hold when considering
enablement.

Enablement means that the ordinary skilled person would have been able to perform the
invention which satisfies the requirement of disclosure[5]. The person skilled in the art is
assumed to be willing to make trial and error experiments to get it to work.[6] Therefore once
the meanings of the prior disclosure and the patent have been determined, the disclosure is
either of an invention which, if performed, would infringe the patent, or it is not. The person
skilled in the art has no further part to play. For the purpose of enablement, however, the
question is no longer what the skilled person would think the disclosure meant but whether he
would be able to work the invention which the court has held it to disclose.[7]

Lord Hoffman also added that he could see no reason why there should be any difference
between the test of enablement for the purposes of prior disclosure and that for the purpose of
sufficiency under section 72 of the Patents Act 1977.

In applying the facts of the case Lord Hoffman had no doubt that Synthons application
disclosed the existence of PMS crystals even though Synthon had mistakenly included an IR
spectrum differing from that indicated in SBs patent, suggesting PMS to be polymorphic
(having more than one crystalline form). However, a variety of experiments conducted prior to
the trial suggested that PMS was monomorphic. This being the case Lord Hoffman considered
that the Judge at first instance had been right to disregard the IR spectrum and conclude that
the PMS monomorph had been disclosed by Synthons application. In that the subject-matter
described was crystalline PMS and a skilled person who performed that invention, though he
might, if he had read the patent, think that he was not going to infringe it, would inevitably do
so.[8] Whether the crystals could be made or not was a question of enablement.

For enablement the issue becomes whether in fact the ordinary skilled man in the art would
have been able to make crystalline PMS. Synthon had in their example unfortunately named a
solvent that was unsuitable for crystallisation. In the trial Judges opinion a skilled man would
have tried a different solvent, either from the range mentioned in the application or forming
part of his common general knowledge. Lord Hoffman could see no reason why this opinion of
fact should be interfered with.

On considering Aldous LJs four points on the two disclosures, above, Lord Hoffman believed
the first and fourth to be irrelevant. The idea of making crystalline PMS was clearly disclosed in
the application and PMS is in fact monomorphic. The second and third points were relevant to
enablement and not disclosure. Lord Hoffman further criticised Aldous LJs conclusion on the
expert evidence, above, for disregarding the Jacob Js opinion that a skilled addressee would
have considered obvious modifications.

10. George vs berneir: Commented [u14]: Two step for Best Mode:
1. Last mode in discloser
2. Wthr understood by PHOSITA
10. GLAXO INC v. NOVOPHARM LTD
Commented [u15]: Difference between enablement and Best
Procedural Requirement of patent mode

11. Autogiro Co. of America v. United States case brief 384 F.2d 391 (1967) Commented [u16]: Imp of claim and rules to ninterpret it.

CASE SYNOPSIS

Defendant government excepted to the trial commissioner's findings, in a suit under 28 U.S.C.S.
1498, which found unauthorized use of patented inventions by defendant, specifically, that 15
of plaintiff corporation's patents were valid and infringed by defendant's various agencies.

CASE FACTS

Plaintiff sued defendant under 28 U.S.C.S. 1498, to recover the reasonable and entire
compensation for defendant's unauthorized use of plaintiff's patented inventions. The trial
commissioner found that 15 of the patents in the suit and 85 of plaintiff's claims in the suit
were valid and infringed by various government structures. Defendant then excepted to the
findings concerning the 15 patents.

DISCUSSION

Upon review, the court found claims of 11 patents valid and infringed.

For eight of the patents and their claims, defendant excepted to the trial commissioner's
findings, but submitted no briefs in support of those exceptions, which resulted in the court's
adoption of the trial commissioner's findings of fact on those patents.

All claims found infringed by the trial commissioner were also found valid.

The court further concluded as a matter of law that plaintiff was the lawful owner of all claims
found valid and infringed, and was entitled to recover reasonable and entire compensation for
the unauthorized use of those claims.

Judgment was entered to that effect, with the determination of the amount of recovery
reserved for further proceedings before the trial commissioner.

CONCLUSION

Because defendant failed to submit briefs in support of its exceptions to the trial
commissioner's findings that plaintiff's patents were valid and infringed, the court adopted the
trial commissioner's findings of fact on those claims, and held that plaintiff was entitled to
recover for their unauthorized use as their lawful
12. M/S Mahashian Di Hatti Ltd. vs Mr. Raj Niwas, Proprietor of MHS, the Delhi High Court re-
affirmed the differential evidentiary standards prescribed for trademark infringement and
passing off.
FACTS
The plaintiff uses the registered logo, MDH within three hexagon device on red colour
background, in its business of manufacturing and selling spices & condiments. The aforesaid
logo has been in use since 1949 in respect of various products such as Kashmiri Mirch and
Kasoori Methi. Registered since 31st May, 1991, the plaintiff attributes its goodwill and
reputation to the long and continuous usage of the mark, various publicity programs and
quality of products.
In the instant suit, the plaintiff contended that the logo used by the defendant, MHS within
hexagen device with red colour background, was similar to its logo. The plaintiff, therefore,
sought injunction restraining the defendant who was also engaged in the same business
from using the infringing logo MHS or any other trademark identical or deceptively similar
to its MDH logo. The defendant inter alia tried to blunt these arguments by contending the
phonetic dissimilarity between MDH and MHS.
JUDGMENT
As per Section 29(1) of Trade Marks Act, 1999, a registered trade mark is infringed by a
person who, not being a registered proprietor or a person using by way of permitted use,
uses in the course of trade, a mark which is identical with, or deceptively similar to, the
trade mark in relation to goods or services in respect of which the trade mark is registered
and in such manner as to render the use of the mark likely to be taken as being used as a
trade mark.

Relying on Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories,


Court distinguished the remedies pertaining to trademark infringement and passing off. In
an action pertaining to trademark infringement, the statutory right of the owner of the
registered trade mark would be infringed when the mark used by the defendant was
visually, phonetically or otherwise similar to the registered trade mark of the plaintiff. The
plaintiff just had to prove that the trademark adopted by the defendant substantially
resembled its trademark on account of extensive use of the main features present in his
trademark. Even if the defendant proved that the consumer could distinguish his products
from that of the plaintiff, he would still be held liable for infringement of the registered
trademark. On the other hand, in case of passing off, if there was a possibility for distinction
of goods by the consumer, the defendant would not be held liable.

In the instant case, the Court compared the logos of the plaintiff and the defendant
and inter alia discerned the following similarities: a) as in the logo used by the plaintiff, the
defendant used three hexagons for framing its logo; b) the letters of both MDH and MHS
were written in white colour and (c) As in MDH, the background colour in MHS was red. In
the light of above similarities, Court concluded the presence of strong visual similarity in
spite of weak phonetic similarity. Further, it was also noted that both the parties were
engaged in the same business of manufacturing and selling spices. Thus, the registered
trademark of plaintiff was held to be infringed by the defendant. The defendant was,
therefore, restrained from manufacturing, selling or marketing any spices or condiments
using the impugned logo MHS or any other trademark which was identical or deceptively
similar to the registered trademark of the plaintiff.

Significantly, the Court awarded punitive damages amounting to rupees one lakh in the
instant case. Citing various case laws, the Court inter alia observed that punitive damages
were governed by principles of corrective justice. The Court, further, noted that if punitive
damages were not awarded in cases like the instant one, it would encourage unscrupulous
individuals / companies to take unfair advantage upon the goodwill and reputation of
others.

13. Aktiebolaget Volvo v VN Prasad 2006 (32) PTC 327(Del)) the Delhi High Court ruled that
the defendant had tried to make use of Volvo's reputation and convey that it was
connected to Volvo. Following earlier court orders, the defendant had altered 'Volvo' to
'Volwo'. The court held 'Volwo' and 'Volvo' to be deceptively similar and restrained the
defendant from using either term through a permanent injunction. It also granted punitive
damages to Volvo

14. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC Commented [u17]: Distinction Between action for
infringement of Trade Mark and Passing Off.
980
"In an action for infringement the onus would be on the plaintiff to
The principle governing suits for infringement was laid down in Kaviraj Pandit Durga Dutt establish that the trademark used by the defendant in the course of
Sharma v Navaratna Pharmaceutical Laboratories trade in the goods in respect of which his mark is registered is
deceptively similar. This has necessarily to be ascertained by a
Brief Facts: comparison of the two marks - the degree of resemblance which is
necessary to exist to cause deception not being capable of definition
Respondent firm was founded in 1926 under the name of Navaratna Pharmacy later by laying down objective standards. The resemblance may be
phonetic, visual or in the basic idea represented by the plaintiff's
changed to Navaratna Pharmaceutical Laboratories in 1945. Respondent was a mark."
manufacturer of medicinal products and proprietor of two registered trademarks
Navaratna and Navaratna Pharmaceutical Laboratories from a period prior to February
25, 1937.
Appellant carried on business which involved preparation of ayurvedic pharmaceutical
products under the name of NavaratnaKalpa Pharmacy and had been vending medicines
prepared by him under the name of NavaratnaKalpa.
The Appellant applied for the registration of NavaratnaKalpa as a trademark which was
successfully opposed by the Respondent. The Appellant moved to the Registrar of Trade
Marks, for removing from the register the trade mark Navaratna by itself or as parts of
other marks as a trademark for goods belonging to the Respondent.
The Registrar directed the Appellant to move to the High Court as the Respondent firm
had already filed an Original suit in the District Court for a perpetual injunction against the
Appellant for infringing the exclusive right that the Respondent had over the words
Navaratna and Navaratna Pharmaceutical Laboratories by advertising his own products
under the name of NavaratnaKalpa and also by passing off his goods as those of the
Respondents.
The District Court granted the Respondent a decree for an injunction confined to the
trademark Navaratna Pharmaceutical Laboratories.
The Appellant made an appeal against the decree of the District Court and also filed an
Original Petition in the High Court of Travancore-Cochin making the same prayer as he did
before the Registrar of Trade Marks. The decree against the Appellant was confirmed by
the High Court and the Original Petition seeking removal of the trade marks of the
Respondent was dismissed.
Appellant filed two Special Leave Petitions before the Supreme Court against the orders
of the High Court affirming the decree against the Appellant granted the District Court and
dismissing the Original Petition of the Appellant.
Arguments on behalf of the Appellant:
The Counsel on behalf of the Appellant argued that Navaratna did not qualify for
registration as Section 6 (1) (d) of the Trade Marks Act, 1940 excluded words having direct
reference to the character or quality of the goods from being treated as distinctive .
Navaratna is a Sanskrit word describing Ayurvedic preparations of a particular
composition and is incapable of being distinctive.
Navaratna neither by itself nor in combination with other words like Pharmaceutical
or Laboratories which are ordinary English words confers has any quality of
distinctiveness.
The Counsel relied on the judgement in the case of India Electric Works Ltd; (1) (1) 49
C.W.N. 425, wherein the Court was concerned with the appeal from an order of the
Registrar refusing registration in the respect of an old mark, i.e., used before February
25, 1937. The mark in question was the word India as applied to electric fans. The Judge
dismissed the appeal on the ground that the word India was a geographical word and
therefore would not qualify for registration as being prohibited by Sec 6 (1) (d).
The next argument made by the Counsel on behalf of the Appellant was based on the
dissimilarity of the packing in which the goods of the two parties were vended. The
Counsel drew attention the fact that the difference in the physical appearance of the two
packets by reason of the variations in their colour and other features and their general get
up together with the name and address of the manufacturer was prominently displayed on
his packets were all set out for negating the Respondents claim that the Appellant had
passed of his goods as those of the Respondents.
Arguments on behalf of the Respondent:
The arguments on behalf of the Respondent solely rely on the proviso to Section 6 (3) of
the Act, which urged that, every mark which had been in use prior to the February 25, 1937
qualified for registration. Hence, the Respondent complained both of an invasion of a
statutory right by the Appellant under Section 21 of the Trade Marks Act in respect of a
registered trademark and also for passing off goods by the use of the same mark as the Commented [u18]:

Respondents.
Courts Observations:

If the matter had to be decided in terms of Section 6 (1) alone, there is great force in the
argument of the Counsel on behalf of the Appellant as regards to the non-registerability of
the Respondents mark.
When the matter is read in reference to the terms of proviso to sub section (3) of Section
6, the Supreme Court finds no error in the approach of the learned District Judge that the
length of the user world be a material factor for the mark to become distinctive and had
become exclusively associated with the goods of the Respondent as they are using the said
mark since 1926 and the said fact was not disputed.
While an action for passing off is a Common Law remedy being in substance an action for
deceit, that is, a passing off by a person of his own goods as those of another, that is not
the gist of an action for infringement. The action for infringement is a statutory remedy
conferred on the registered proprietor of a registered trade mark for the vindication of the
exclusive right to the use of the trade mark in relation to those goods. The use by the
Defendant of the trade mark of the Plaintiff is not essential in an action for passing off, but
is the sine qua non in the case of an action for infringement. No doubt, where the evidence
in respect of passing off consists merely of the colourable use of a registered trade mark,
the essential features of both the actions might coincide in the sense that what would be a
colourable imitation of a trade mark in a passing off action would also be such in an action
for infringement of the same trade mark. But there the correspondence between the two
ceases.
In an action for infringement of a trade mark the onus would be on the Plaintiff
(Respondent) to establish that the trade mark used by the Defendant (Appellant) is
deceptively similar. This has to be done by a comparison of the two marks. Where the
similarity between the Plaintiffs and Defendants marks is so close either visually,
phonetically or otherwise, the Court reaches the conclusion that there is an infringement. Commented [u19]: Lord: MOULTEN IT RECOGNISE THAT
No further evidence is required to establish that the Plaintiffs rights are violated. DISTINCTIVNESS not mean innate It can be acquired.
Commented [u20]: Concept of Geographical Indications as
Expressed in another way, if the essential features of the trade mark of the Plaintiff have Developed and Applied by Indian Courts
been adopted by the Defendant, the fact that the get- up, packing and other writing or Grounds for Refusal of Registration of a Trademark the Indian Law
DR.K.S.Ravichandran Partner, KSR&Co.,Company Secretaries,India
marks on the goods or on the packets in which he offers his goods for sale show marked
differences, or indicate clearly a trade origin different from that of the registered A trademark may be either inherently distinctive or capable of
proprietor of the mark would be immaterial; whereas in the case of passing off, the distinguishing its goods by acquiring distinctiveness if used for some
period of time. The Trademarks Act, 1999 (the Act) is the law in
Defendant may escape liability if he can show that the added matter is sufficient to India containing absolute and relative grounds for refusal of
registration of a trademark.
distinguish his goods from those of the Plaintiff.
Absolute Grounds (Section 9 of the Act)
A finding regarding the packing is relevant with respect to the relief on the ground of
passing off, but plays a limited role in an action for infringement of a registered trade mark The First Rule [sub-section (1)]

by the registered proprietor who has a statutory right to that mark and a statutory A. The mark lacks distinctiveness;

remedy,under S. 21, for vindication of his exclusive right to use it. B. The mark is descriptive of the characteristics of the goods or
services;
The question of deceptive similarity is one of facts, unless the test employed suffers from
error the Court would not interfere. In the instant case there being no such error, the C. The mark consists exclusively of marks or indications which have
become customary or in the bonafide and established practices of
conclusion reached by both the lower courts that the Appellants mark was deceptively the trade.

similar to that of the Respondent, cannot be interfered with. Exception to the above Rule the Proviso to subsection (1)
Lastly, it was submitted that this was a case of honest con-current user within Section
Before the date of application for registration, if the mark has
10(2) of the Trade Marks Act, 1940. However, this point was not raised in the Lower acquired a distinctive character as a result of the use made of it or if
the mark is a wellknown mark, the mark shall not be refused
Courts, therefore the Supreme Court did not entertain it either. registration.

In ELGI Ultra Industries Limited v The Assistant Registrar of Trade


Marks, the Intellectual Property Appellate Board [IPAB],
As a result, the appeals of the Appellant were dismissed MANU/IC/0062/2008, the IPAB held that the words ultra and
perfect are highly descriptive and laudatory.

In Imperial Tobacco Company of India Ltd v. Registrar of


Trademarks, AIR 1968 Cal 582, the Calcutta High Court held that
the trade mark Simla with the label is composite in character. It is
14. The perfection case: a well known hill station of India. Its geographical signification is,
therefore, plain and unequivocal.
15. Imperial Tobacco Co v Registrar, Trade Marks2 the Calcutta High Court explained to the Second Rule [sub section (2)]
following concept of geographic term namely:
A. The mark is of such nature as to deceive the public or cause
confusion;
Geographical terms and words in common use designate a locality, a country, or a section of
B. The mark is likely to hurt religious sentiments;
country which cannot be monopolized as trade marks; but a geographical name not used in
C. The mark comprises scandalous or obscene matter;
geographical sense to denote place of origin, but used in an arbitrary or fanciful way to indicate
origin or ownership regardless of location, may be sustained as a valid trademark. 3 D. The use of the mark is prohibited under the Emblems and Names
(Prevention of Improper Use) Act, 1950;

Brief facts: The Third Rule [sub-section (3)]

If the mark consists exclusively the shape of the goods (i) resulting
The Appellant applied for Registration of the mark Simla under Part A of the Register. A Show from nature of the goods; or (ii) which is necessary to obtain a
technical result; or (iii) which gives substantial value to the goods.
Cause Notice was issued to the Appellant stating that the word Simla is a geographical name
and registrable only on very strong evidence of distinctiveness. On reply, the Appellants Relative Grounds (Section 11 of the Act)
...
provided evidence regarding extensive sale and advertisement, that was rejected as the mark
should have acquired distinctiveness on the date of making the application. The Appellant kept
quiet for two years before a new application was filed along with 22 affidavits from various
persons under Part B of the register on the same date as the previous one was withdrawn. After
rejection of which, this appeal was filed.

Arguments on behalf of the Appellant:

The said mark has been in use for 3 years prior to the application for registration, therefore,
has acquired distinctiveness and so qualified for registration.

Previously also, geographical names have been registered in Class 34, in India, for instance, St.
Moritz, North Pole Everest, Medina, Panama. Oxford, Kali-ghat, Ellora, Mavfair, West End,
Gulmarg, London etc.

Arguments on behalf of the Respondents:

A geographical mark may only be registered on it being distinctive and Simla cigarettes could
not have gained distinctiveness in a short period of three years.

Further, the nature of the evidence as regards distinctiveness was also not independent and
reliable.

This is also not a fancy word as it may deceive,not the informed smokers, but an ordinary
smoker without any special knowledgeof tobacco not being related to Simla.

Issue:

Whether geographical name Simla has acquired distinctiveness within a short period of 3
years on account of extensive sale and advertisement?

Courts Observations:

The statutory position in India in the Trade andMerchandise Marks Act 1958 was examined
thus:

Section 9(1)(d) makes it clear that there is no absolute bar on registration of a geographical
name for it is registrable except upon evidence of its distinctiveness.Various cases such as the
Liverpool case, (1928) 46 RPC 99 and the Yorkshire case, (1954) 71 RPC 150 also indicate
towards striking evidence of distinctiveness. Additionally, evidence as to the word being a fancy
word may also be accepted. Fancy, for this purpose, as has been held is a word that has an
innate and inherent character of fancifulness which does not depend on evidence to show that
in fact that it is neither deceptive nor descriptive. In the case at hand, the court in this regard,
observed that though tobacco is not grown in Simla today, there may be traders in future who
will manufacture tobacco there. Hence, it may be deceptive.

The learned Editor of the 9th Edition of Kerly on the Law of Trade Marks and Trade Names in
paragraph 286 and pages 144-45 has emphasized on elements of area and time to acquire
distinctiveness. Further, Thorne & Co. Ltd. v. Sandow Ltd., (1912) 29 RPC 440 at p. 451 is
authority for stating that an applicant is entitled to withdraw an application and make a second
application so as to obtain the advantage of a longer period of use.

The principle laid down in the Magnolia case (1897) 14 RPC 621 will also not be applicable
here. It was stated that a word does not become a geographical name simply because some
place upon the earths surface has been called by it but Simla is far too well-known a place in
the geography of India.

The question that arises is, therefore, of reliability and independence of the evidence that
according to the Glastonburys case (1938) 55 RPC 253, must be reliable and Bardmans case,
(1913) 30 RPC 218 must be scrutinized not only with critical but even with sceptical vigilance.

In the instant case, all of these affidavits follow the same pattern and are verbatim copies of
each other.

Further, persons providing these affidavits the employees and the dealers do not seem to
have given disinterested or independent evidence as they are interested to boost the
Appellant. In other cases, the affidavits written in English have been signed in Urdu and Hindi
by the deponents do not seem to know English. Neither is there any statement that the
contents of the affidavits were explained to them or they signed such affidavits after having
understood what they were signing.

The status, responsibility, dependability of these persons specially when they used the
evidence of affidavits which cannot be checked do not seem to indicate that it is reliable
evidence which can prove distinctiveness in a magically short time of barely three years.

Therefore, on account of unreliability of evidence, hence, indistinctiveness, the court upheld


the decision of the Registrar and the appeal was dismissed
16. King-Seeley Thermos Co. v. Aladdin Industries, Inc. United States Court of Appeals for the Commented [u21]: TradeMark as genric term

Second Circui321 F.2d 577 (1963)

Facts

In 1907, King-Seeley Thermos Co. (Thermos Co.) (plaintiff) began advertising the term
Thermos to describe its vacuum-insulated bottle for food and beverages. Initially, Thermos
Co. made no attempt to designate the term Thermos as an indicator of the source of the
product, and over the years the word came to be understood by consumers as a generic term
to describe the product category of vacuum-insulated bottles. In 1923, after realizing that the
Thermos trademark was in danger of becoming generic, Thermos Co. undertook a campaign to
identify Thermos as a trademark. The campaign failed, however, and by 1950, the word
thermos had become nearly synonymous with a vacuum-insulated bottle and was not widely
viewed as a trademarked indicator of source by the consuming public. Aladdin Industries, Inc.
(Aladdin) (defendant) developed its own vacuum-insulated bottles to be sold as thermos
bottles.

Thermos Co. brought a trademark-infringement suit against Aladdin to enjoin the use of the
Thermos trademark. Aladdin argued that the term thermos had become generic when used in
connection with vacuum-insulated bottles and that Thermos Co. was no longer entitled to
trademark rights in the term. The district court held in favor of Aladdin, finding that thermos
had become a generic term for vacuum-insulated bottles and could no longer be registered as a
trademark. Thermos Co. appealed the decision.

Judge Anderson found that although a substantial majority of the public knows and uses the Commented [u22]: GENERIC: WHAT ARE YOU?
NOT GENERIC: WHO ARE YOU? FROMWHERE YOU ARE COMING.
word "thermos", only a small minority of the public knows that this word has trademark
significance.

17. N.R. Dongre and Ors. vs. Whirlpool Corpn. and Anr. 1996 PTC (16) 583 (SC) Commented [u23]: Concept of well known trademark

FACTS http://ssrana.in/Intellectual%20Property/Trademarks/Trademark
_Well_Known.aspx
The Whirlpool Corporation, i.e. the Plaintiff No. 1 is a multinational corporation
incorporated in U.S.A. and had an established business in the manufacture, sale,
distribution and servicing of washing machines of all kinds.

Plaintiff No. 1 is the successor of a trade mark WHIRLPOOL since 1937. By 1957
WHIRLPOOL was a leading trade mark and name in the United States and Canada in
relation to washing machines. The Plaintiff No. 1 had through itself or though its
subsidiaries 2000 trade mark registration all over the world spanning 65 countries.
The Plaintiff No. 1 had obtained registration of the Trade Mark WHIRLPOOL in India in
the year 1956 in respect of clothes dryers, washers, dishwashers, etc. In Classes 7, 9 and
11 However in 1977, registrations in India lapsed on account of failure to apply for
renewal.

In 1987, Plaintiff No. 1 entered into joint venture with the Plaintiff No. 2, i.e. TVS
Whirlpool Ltd. (a limited Company incorporated in India) and the machines were sold by
Plaintiffs under the TVS brand using the phrase in collaboration with Whirlpool
Corporation. The Plaintiff No. 2 was licensed by the Plaintiff No. 1 to use the trade mark
and trade name WHIRLPOOL. Before this, the products bearing the marks
WHIRLPOOL were being sold by Plaintiff No. 1 to US Embassy in India.

Sometime, in August, 1986 the Defendants filed applications for registration of the
Trade Mark WHIRLPOOL. When the said application was published, the Plaintiffs
opposed registration of the same. However, opposition of the Plaintiff was dismissed by
the Assistant Registrar on grounds of non-use and non-reputation of Plaintiffs mark
WHIRLPOOL in India and thus, no likelihood of confusion arises if the Defendants were
permitted to use the same.

The Plaintiffs filed an appeal against the said order which was pending before the
Honble Court. After, the Trade Mark of the Defendant was registered, the Plaintiffs filed
petition under Section 46 and 56 of the Trade Marks Act, 1958 seeking cancellation of
registration.

In July, 1994 plaintiffs came across an advertisement of defendants soliciting dealers for
WHIRLPOOL washing machines. Thereafter, Plaintiffs purchased a washing machine of
the Defendant bearing the mark WHIRLPOOL which was found to be of inferior quality
to the Plaintiffs washing machine.

Thereafter, the Plaintiffs instituted a suit against the Defendants bearing CS(OS) No.
1705 of 1994 in the Honble High Court seeking permanent injunction on the
Defendants from using the mark WHIRLPOOL.

ISSUES

1. Considering, the fact that if the Plaintiffs has no sales in India can it be said, that the
Plaintiff had acquired a Trans-Border Reputation and as a corollary to that Trans-Border Commented [u24]: TBR

Reputation can an action by Plaintiffs for passing off be maintainable or should their
goodwill/reputation be confined to territories of their actual use?
2. Whether the Plaintiffs who are not registered proprietors of trade mark WHIRLPOOL
in respect of washing machines, can maintain an action for passing off against the
Defendant, who is a registered proprietor of the same mark for same goods?

HELD:

SINGLE JUDGE BENCH

ISSUE NO. 1 The learned Single Judge held the issue in favour of the Plaintiffs and relied on
the following:

Plaintiff No. 1s sales in India to US Embassy and documents pertaining to its prior use,
registrations, etc. Globally.

International magazines having circulation in India containing advertisements of the


products of the Plaintiffs bearing the mark WHIRLPOOL.

Further, the Learned single judge relied on certain precedents on the said question of
law, such as:

William Grant & Sons Ltd. v. McDowell & Co. Ltd.;

Kamal Trading Co. V. Gillette UK Ltd.; (1988) 1 PLR 135

WWF International v. Mahavir Spinning Mills.; 56(1994) DLT271

ISSUE NO. 2 The learned Single Judge held the issue in favour of the Plaintiffs and relied on
the following:

Section 28 of the Trade Marks Act, 1958 read with Section 27(2) of the Trade Marks Act,
1958 (So as to hold that irrespective of Registration of Trade Mark and factum of
exclusive use as provided in Section 28 to the registered proprietor, the same right
is subject to other provisions of the Act. Other provisions include Section 27(2) which
is worded as a non-obstanteclause and over-rides all provisions of the act including
Section 28. Thus, a registration of a Trade Mark is irrelevant in an action for passing off.)

Further, the Learned single judge relied on earlier precedents on the said question of
law, such as:

Century Traders v. Roshan Lal Duggar & Co.; AIR 1978 Delhi 250

Wander Ltd. v. Antox India (P) Ltd.; 1991(11)PTC1(SC)


Thus, the learned Single Judge (Delhi High Court) by order dated 31.10.1994, granted a
temporary injunction in favour of the plaintiffs relying on the following grounds, other than the
ones mentioned above:

(i) Prior registration of the mark WHIRLPOOL in India by the Plaintiffs in 1956 and continuous
till 1977 which is prior to earliest claim by Defendant from 1986.

(ii) No reliable evidence of defendants of the Defendants having marketed their washing
machine s for any considerable length of time prior to date of grant of injunction.

(iii) Balance of convenience in favour of the Plaintiff as the machines of the Defendant were of
inferior quality.

Note: It is also pertinent to add that the Defendants had also raised the defences of
abandonment of the mark by the Plaintiffs as well as delay, laches & acquiescence by the
Plaintiffs. All these contentions of the Defendants were negativated by the Learned single Judge
as the Plaintiffs were diligently following up with registrations of their marks, had filed
oppositions, appeals, rectifications and the present suit to protect their mark,

DIVISION BENCH (FAO(OS) No. 262 of 1994)

On Appeal, the Division Bench of the High Court came to the conclusion that there was no
reason to interfere with the discretion exercised by the learned Single Judge in granting the
temporary injunction. Accordingly, the defendants appeal was dismissed. The Division Bench
also, additionally noted in dismissing the appeal that there was no plausible & convincing
explanation by the appellants as to how they came to adopt the mark WHIRLPOOL.

SUPREME COURT (Civil Appeal No. 10703 of 1996)

In the Special Leave Petition the Supreme Court finally upheld the decision of the Learned
Single Judge as well as the Division Bench affirming the decision of the single judge and
dismissed the appeal of the Defendants with costs.

18. Citation. Creative Non-Violence v. Reid, 490 U.S. 730, 109 S. Ct. 2166, 104 L

Brief Fact Summary. Reid (Defendant) created a sculpture on commission from the Community
for Creative Non-Violence (Plaintiff), and contended that since he had not been employed by it
under common law agency principles, he owned the copyright of the sculpture.

Synopsis of Rule of Law. Under common-law agency principles, one who creates an artwork at Commented [u25]:

the directive of another retains copyright upon it unless that other had employed the artist.
Facts.The Community for Creative Non-Violence (CCNV) (Plaintiff) was a nonprofit organization
dedicated to advocacy for the cause of the homeless in the United States. It negotiated with
Reid (Defendant), a sculptor, to create a variation on the classic nativity scene, depicting
homeless persons. Agreement was finally reached and Defendant made the sculpture out of a
bronze-like material. Defendant worked in his studio with little direction from CCNV (Plaintiff).
Following the unveiling, Defendant registered a copyright on the work. Subsequent to this, a
disagreement arose between Plaintiff and Defendant who had taken custody of the sculpture,
over future exhibition thereof. Plaintiff filed an action seeking to obtain possession of the
work. The district court held Plaintiff to have the right to exhibit the statue. The federal circuit
of the court of appeals reversed, and the United States Supreme Court granted review.

Issue.Under common-law agency principles, does one who creates an artwork at the directive
of another retains copyright upon it unless that other had employed the artist?

Held.(Marshall, J.) Yes. Under common-law agency principles, one who creates an artwork at
the directive of another retains copyright upon it unless that other had employed the artist. 17
U.S.C. 201 (a) provides that copyright ownership vests initially in the works author,
something Reid (Defendant) in this case obviously was. Section 101 of the 1976 Copyright Act
creates an exception to this in the case of works created for hire. Section 101(2) mandates
copyright vestiture in the case where the author is an independent contractor of another, in
specific instances not applicable in this case. Section 101(1) provides that the work is one
created for hire if the work is created by an employee within the scope of his employment,
and this subsection is the only one that can divest Reid (Defendant) of copyright therein.
Employee is not defined in the section. This being so, the rule comes into play that words
used in a statute will be presumed to possess their normal meanings. Contrary to CCNVs
(Plaintiff) assertions, employee is a narrower term than one over whom another exercises a
measure of control. Rather, employee has a particular meaning, derived from common-law
agency principles, wherein one party performs labor for another under circumstances in which
that other exerts substantial control over the work environment on the laborer, as well as the
manner of performance. Numerous factors figure in this equation, such as the level of skill
required, tax treatment of the putative employee, the singleness of the assignment, and the
source of the instrumentalities of the labor. In this instance, the work was highly skilled; Reid
(Defendant) was retained only for this single assignment, was not treated as an employee for
tax purposes, and provided his own work area and tools. The conclusion is mandated that,
under agency principles, Defendant was not an employee of P. Therefore, the 101(1)
exception to 201(a) does not apply, and the copyright belongs to Reid (Defendant). Affirmed.

Discussion.Sections 101(1) and 101(2) were the result of lengthy debate and compromise in
Congress. Before 19555, any commissioned work belonged to the hiring party. For the next
several years, changes in this rule were proposed many times. Finally, in 1965 the substantive
embodiment of current law was enacted.

19. Najma Heptulla v. Orient Longman Ltd. And Ors. AIR 1989 Delhi 63

Brief Facts:

The manuscript of the book India Wins Freedom was ready for publication in November, 1957.
However, before the book could be published, Maulana Azad, the author of the book, died.

After that, National Archives, New Delhi and National Library, Calcutta agreed to be the
trustees of the complete manuscript, including the 30 pages which were not published till the
present judgement.

It was agreed that seal of the complete manuscript would only be broken after 22nd February,
1988, on the request of Prof. Humayun Kabir, a close associate of Maulana Azad.

On 29th May, 1958 Fatima Begum (grandmother of the Plaintiff) and Nooruddin Ahmed, two
legal heirs of Maulana Azad, gave their written consent to the arrangements for the publication
of the aforesaid book, excluding the 30 pages.

On 2nd September, 1958 an agreement was entered into between Prof. Kabir and Orient
Longman to publish the aforesaid book, excluding the 30 pages, and pay half of the royalty to
Indian Council of Cultural Relations and the other half to Fatima Begum and Nooruddin Ahmed
equally.

It was stated in the agreement that Prof. Kabir was the composer of the book. It was also
agreed that the publishers would have the first option to publish the complete book after the
seals would be broken on 22nd February, 1988.

A notice dated 13th February, 1988 was issued by the Plaintiff to the National Library and
National Archives to inform that she was not desirous to publish the complete book. Later on,
the present suit was filed for the rendition of accounts and injunction against the Defendants to
restrain them from publishing the complete book.

The Plaintiff (Najma Heptulla), one of the legal heirs of late Maulana Abul Kalam Azad, had
sought relief against Defendant No. 1 (M/s. Orient Longman Ltd.) with whom an agreement had
been entered into by Professor Humayun Kabir, who is claimed by his daughter (Defendant no.
6), to be the real author of the book India Wins Freedom. Maulana Azad, during his life time,
wrote the aforesaid book India Wins Freedom.

Plaintiffs Contentions:

Maulana Azad, during his life time, wrote the aforesaid book India Wins Freedom.

Plaintiff is a legal representative of Maulana Azad and the copyright in the complete book vests
in the legal representatives. It is, therefore, submitted that Prof. Kabir had no authority to enter
into the agreement dated 2nd September, 1958 with Orient Longman. Until all the legal
representatives of Maulana Azad decide to publish the entire book, the same cannot be made
known to the public.

Defendants Contentions:

Agreement dated 2nd September, 1958 was valid because Prof. Humayun Kabir was a joint
author with Maulana Azad and that he had been duly authorised by the owners of the
copyright to execute the agreement dated 2nd September, 1958.

Issues:

(i) Whether Prof.Kabir is the sole author of the book India Wins Freedom?

(ii) Whether Prof. Kabir had any authority to execute the agreement dated 2ndSeptember, 1958
with Orient Longman?

Courts Observations:

(i) No

Rationale of Decision: According to the preface to the said book written by Prof Kabir, Maulana
Azad used to describe his experiences in Urdu, on the basis of which a draft in English would be
prepared by Prof. Kabir. The intention of the Copyright Act cannot be to give the status of an
author only to the person in whose language the literary piece is written while completely
ignoring the person who contributed the entire material. Both the subject matter and the
language are important. Hence, Maulana Azad and Prof. Kabir are joint authors.

(ii) Yes

Rationale of Decision: As Prof. Kabir was not the sole author of the said book, it was necessary
for him to have been authorised by the legal representatives of Maulana Azad to enter into an
agreement with Orient Longman. Even though from the document dated 29th May, 1958 alone
it is not possible to conclude that all the terms contained in the agreement dated 2nd
September, 1958 were expressly ratified by the legal heirs, their conduct of accepting the
royalty, payable by Orient Longman, must have led it to believe that the said agreement had
their consent. Having enjoyed the fruits of the said agreement for all these years without any
demur, the legal representatives of Maulana Azad are estopped from challenging the validity of
the said agreement.

Hence, the Defendants were allowed to break the seals of the covers of the complete book
India Wins Freedom and make its contents known to the public.