DELHI HC DECIDES FAMOUS “ISMAIL BUILDING” TRADEMARK CASE
The present suit was filed by the plaintiffs alleging that their “Ismail Building photo” device mark is being infringed and passed off by the defendants. Their actions violate the plaintiff’s right to publicity for commercial advantage. The device mark in question is over 116 years old and has been accorded a Grade II A Heritage Status. The matter was eventually settled out of court with both parties reaching an amicable agreement, however, this case raised several questions regarding the application of trademark law on the building.
AI INFRINGES COPYRIGHT OF GETTY IMAGES
Stability AI, the creators of an artificial intelligence art tool named ‘Stable Diffusion’, is being sued by Getty Images for copyright infringement. Stability Diffusion AI functions via machine learning algorithms to analyze images and then generates a new image based on the image but also has unique elements. Getty Images has alleged that the AI has used millions of their images which are copyrighted without any license, thus infringing upon the copyright of Getty Images. The present case will be heard by the High Court of Justice in London.
DELHI HC – DIFFERENCE IN BRAND NAME NOT DEFENSE AGAINST PRIOR PUBLICATION
The present suit is with regard to the registered design held by the plaintiff, who alleges that the defendant has infringed upon the same. The defendants argue that S. 22(3) read with S.19(1)(b) of the Designs Act can be invoked to plead that because of prior publication, the suit design is vulnerable to cancellation and thus, they cannot be proceeded against. Further, the plaintiffs had published the design on their website under the brand name of “ZEPHYR” and this amounts to prior publication of design as under S. 19(1)(b) of the Designs Act. The plaintiffs contended that the brand name “ZEPHYR” was used for other designs of coolers and the suit design was available under the brand name “MIST”. The plaintiff’s contention was held to be immaterial, and that only whether there was prior publication is relevant here. Thus, the Court upheld the contention of the defendants and held that a difference in the brand name is not a defense against the prior publication of a design suit.
COURT HOLDS THAT CONCEPT IMAGES ARE NOT CONSIDERED PRIOR ART – NOT TANGIBLE DEPICTION
The Delhi High Court entertained a review petition which alleged that the impugned decision was not in line with the binding precedent of Reckitt Benckiser India Ltd. v. Wyeth Ltd., FAO (OS) 458/2009; which held that “publication in tangible form or in any other way as given under Section 4(b), Designs Act, 2000 does not refer to an actual product only, but could be in any other way such that the shape or other features of the article are made clear to the eye”. The impugned order in question stated that “Concept design was a mere concept in the form of a computer image. Such a computer image cannot constitute a depiction of the design in a tangible form, so as to enable the court to apply the design and visualize the final product which would emerge by application of the design”.
Here, the Court has held that interpretation of the Reckitt Benckiser case would not be applicable here, in the Court’s opinion tangible form refers to a specific physical form or shape as applied to an article and not the mere ability to replicate, convert and give a physical shape to the design, the article need not have been used. It shall not be considered publication unless it is a publication by use, in tangible form, or in some other way, meaning that the design should not be on paper alone, but that the design on paper should be recognizable. Derived from the above, the Court held, “A computer image is merely an idea of what the design should look like. It is not even a prototype, or a photograph of a prototype. Reckitt Benckiser, in my view, clearly forecloses such a concept as being regarded as a design, so as to render the mere communication of the computer image, by one person to the other by e-mail, as “prior publication” within the meaning of Section 4(b) of the Designs Act.”
DELHI HC SETS ASIDE NOVARTIS PATENT ON PROCEDURAL GROUNDS
In the present case, the Delhi High Court allowed a writ filed under Art. 226 assailing an order allowing a patent on pharmaceutical combinations for an ‘Angiotensin Receptor Antagonist and a NEP Inhibitor’ filed by Novartis. Here, the Court would not be examining the merit of the impugned order; instead, the writ speaks of procedural irregularity and violations of the principles of natural justice. Natco argues that the amended claims of Novartis were considered and a hearing was conducted, however, they had not been informed of the same. The Court agreed with these contentions and the matter must be freshly considered from when the default occurred.
CALCUTTA HC RULES THAT AN INVENTION CAN NOT BE SAID TO BE OBVIOUS WHEN DISECTED AND INDIVIDUAL PARTS ARE KNOWN – MUST BE CONSIDERED AS A WHOLE
In the present case, an appeal under S. 117A(2) of the Patents Act against the order passed by the Assistant Controller of Patents and Designs which rejected the patent application of the appellants, which was for an invention titled “HEALD FOR PROCESSING TAPE- SHAPED MATERIAL AND METHOD FOR MANUFACTURE THEREOF”, the same had also been granted in over eleven jurisdictions after fulfilling the requisite tests for patentability. The same was rejected on grounds of lacking inventive steps in the present order. The appellants allege that the Assistant Controller has not considered the invention as a whole and instead taken the same apart and considered individual parts.
Here, the Court agreed with the contention of the appellants, stating that “in determining inventive steps, the invention should be considered as a whole. In other words, it is not sufficient to draw the conclusion that a claimed invention is obvious merely because individual parts of the claim taken separately are known or might be found to be obvious. The contention that an invention is obvious in relation to a particular item must be treated with care and caution. In doing so, the whole picture presented should be taken into consideration and not a partial one”. The order of the Asst. Controller was held to be erroneous and set aside, the application must also be considered afresh.