Trademarks, Patents, and Geographical Indications

Kirti BalasubramanianPartner

Paarth SamdaniAssociate

Yashaswini HareeshAssociate

Key Developments

• Delhi High Court upholds restraint against use of the same mark for allied or cognate products catering to the same set of users

  A division bench of the Delhi High Court upheld a single judge’s order partially restraining Wipro Enterprises from using the trademark ‘EVECARE’ for feminine hygiene and menstrual health products as it could cause confusion among consumers since Himalaya Wellness was already using the same trademark for similar products.

  Wipro contended that it had secured a registration for the trademark ‘EVECARE’ for a cleansing feminine hygiene wash product, while Himalaya Wellness operated in the field of ayurvedic medicine. The Court observed that the end consumers of the two products were women and their usage related to the female reproductive system/menstruation. Moreover, the products in question were ‘hush products’, i.e., women would hesitate to make inquiries about the products or their origin due to the associated stigma, leading to a higher chance of confusion. In light of these findings, the Court dismissed Wipro’s appeal on the ground that its mark was identical to that of Himalaya Wellness and was used for goods of an allied or cognate nature. The Court, in this case, presumed a higher degree of confusion due to the sensitive nature of products, holding them to be allied and cognate with those of the counterparty, based on the purpose of use of the products.

  This decision highlights the importance of preventing consumer confusion in respect of ‘hush products’ and clarifies that goods or services, though disparate, may be considered allied and cognate depending on their purpose and nature of consumers.

• Calcutta High Court introduces new rules forming its own Intellectual Property Division

  Following the Madras and Delhi High Courts, the Calcutta High Court has formed its own Intellectual Property Division (IP Division) for dedicated adjudication of intellectual property (IP) disputes, through the notification of Intellectual Property Rights Division Rules, 2023 (Rules) in the Kolkata Gazette. Notably, the Rules includes special provisions to ease the litigation process for persons with disabilities. After this, the Bombay High Court will be the only remaining high court with original jurisdiction which does not have a dedicated IP bench.

  Recently, the Himachal Pradesh High Court has published its own IP division rules in the Official Gazette of Himachal Pradesh. The Karnataka High Court is also in the process of setting up its own IP division and has formed a sub-committee to draft rules in this regard. This move across various High Courts comes after the abolition of the Intellectual Property Appellate Board and reflects the judiciary’s recognition of the complexity of IP disputes.

• Committees constituted to draft a code of conduct to govern patent and trademark agents

  In September, the Controller General of Patents, Designs and Trade Marks (CGPDTM) constituted a committee to prepare a draft code of conduct for patent and trademark agents (Agents). The CGPDTM also constituted an ad-hoc committee to deal with complaints against Agents till the code of conduct is finalised.

  Earlier, in July 2024, the Delhi High Court had restored a patent application which was deemed abandoned due to non-filing of a timely reply to the First Examination Report by the petitioner’s patent agent, despite the due diligence of the applicant.¹ This prompted the Court to examine the growing concern around professional negligence and conduct of patent agents. The Court emphasised the importance of the Agent’s role in assisting the CGPDTM in timely prosecution of patent and trademark applications. Accordingly, the Court directed the CGPDTM to publish a draft code of conduct within two months of its order, and a finalised code by 31 December 2024.

  While the draft code of conduct is yet to be published, the constitution of the two committees is a step towards finalisation of the code of conduct and ensuring that applicants are treated fairly.

• Delhi High Court holds algorithmic processes not patentable

  The Delhi High Court dismissed Blackberry’s appeal for a patent on a process for managing wireless systems.² The Court found that while the underlying invention provided a structured approach to managing operations within wireless systems, it was based primarily on algorithmic processes, which are not patentable subject matter as per Section 3(k) of the Patents Act, 1970. The Court rejected BlackBerry's argument that the invention had a technical contribution, finding that the contribution was solely due to the use of an algorithm without any significant change in hardware or technical effect. The decision of the Court highlights the need for inventions to have demonstrable and tangible technical contributions to be considered patentable. This holding is largely in line with the current position in the United States of America³ and several nations forming part of the European Union,⁴ each of which require a computer program to have a transformative effect in order to be protected as a patent.

• New rules for handling complaints against trademark and geographical indication violations

  On 16 August 2024, the Department for Promotion of Industry and Internal Trade (DPIIT) notified the Trade Marks (Holding Inquiry and Appeal) Rules, 2024 and the Geographical Indications of Goods (Holding Inquiry and Appeal) Rules, 2024 (collectively, Rules), following the decriminalisation of various offences by the Jan Vishwas (Amendment of Provisions) Act, 2023.

  These Rules address the false representation of a trademark or geographical indication as registered, allowing individuals to file electronic complaints against such representation, and empower adjudicating officers to conduct inquiries, issue show cause notices, and impose penalties. The Rules also require inquiries to be completed within three months, ensuring timely resolution of disputes.

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