INJUNCTIONS ON PATENTS & TRADEMARKSPrepared by: Hitendra Hiremath
INJUNCTIONS An injunction is an order of a Court prohibiting someone from doing some specified act or commanding someone to undo some wrong or injury. General rules governing the grants of injunction are in Sec.36 to 42 of Specific Relief Act,1963 and Order 39, Rules 1 & 2 and Sec.151 (Inherent power of Court) of CPC,1908. Type of Injunctions 1) Temporary/Interlocutory (a) Ex-parte Injunction (b) Mareva Injunction 2) Perpetual Injunction 3)Mandatory Injunctions Provisions as to Specific Relief Act and CPC Grant of Preventive Relief (Sec.36 of Specific Relief Act) Temporary injunctions to be granted at any stage of suit, for specified time or further orders (Sec.37(1) of Specific Relief Act) Perpetual Injunctions by the decree made at hearing and upon merits of Suit(Sec.37(2) of Specific Relief Act,1963)
to undo the wrongful act done by defendant through mandatory injunctions (Sec.39 of Specific Relief Act,1963) Ex-parte injunction are granted where there is a possibility of defendants destroying or disposing of the incriminating material. Such orders are passed without giving a notice to defendants. Were as the Court shall make an endeavour to dispose of application within 30days.(O.39, R.3-A of CPC,1908) Mareva Injunction are passed to freeze defendant’s assests. Requisties to Grant Injunction: a) a strong prima facie case b) an irreparable injury c) balance of convience d)must show a clear necessity for immediate protection of alleged right which may injured or impaired(O.39,R.1,Note 5 of CPC) Principles governing the grant of temp injunction and perpetual injunctions are similar. (O.39,R.1,Note 5 of CPC)
Patents A patent is an exclusive privilege granted to an inventor to exploit his invention for a period of twenty years from the date of filling of the application; and during that term, prevent others from copying his invention. Principles underlying a patent: The main criteria for securing a patent are: 1)Novelty: that the invention must be new. 2)Inventive Step: invention must not be obvious to a person reasonably skilled in the field 3)Utility: useful to the society Rights of Patentee Infringement of Patents: What can amount to infringement? Reliefs in suits of infringement: Sec.108 of Patents Act,1970.
Judicial Pronouncements Grant of patent itself cannot be deemed to be prima facie case on the side of the patentee and it is duty of the patentee to prove prima facie case as any other case of application for injunction: Mariappan v. A.R.Safiulla & Others: Provision in question was Sec.13(4) Patent having been granted in favour of plaintiff for the product, he is entitled to protection by way of an interim injunction. An injunction cannot be granted where the validity of the patent itself has been questioned and revocation petition has been filed: Bilcare Ltd., v. Supreme Industries Ltd. MIPR 2007 (2) 13. Manufacturing and marketing blister films made out of a variety of plastic materials with PVC for packing pharmaceutical products.
Bajaj Auto Ltd. v. TVS Motor Company Ltd. 2008 (9) SCC 797. Infringement of the patent with the invention of technology of improved internal combustion engine. Court observed invention by Bajaj is plug centric & that of TVS is valve centric.
Trademarks Trademark is the identification mark of any company or organization. A customer relates any trademark with the quality of products and reputation of the company that is using it. It is a distinctive name, word, phrase, symbol, logo, design, image, or a combination of these elements that identifies a product, service or firm that has been legally registered. Term of a trademark is ten years, which may be renewed for a further period of ten years. Trademarks grant the owner the right to prevent competitors from using similar marks in selling or advertising. Infringement: Sec.29 of the Trademark Act,1999 talks about various aspects related to infringement.
Sec.29(1)that 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 trademark is registered and in such manner as to render the use of mark likely to be taken as being used as trade mark. Other sub-sections describes that in course of the use of the trademark it is said to be infringing the rights of other company due to use of similar or identical trademark using for marketing of similar goods and services or use of identical or deceptively similar trademark for any other kind of goods and services. Essentials of Infringement: 1)Taking essential feature of mark or whole mark. 2)Infringing mark must be used in course of trade. 3) Use of mark must be printed i.e., through advertisements, invoices or bills.
If trade channels are same, use of identical name will amount to infringement: This was held in C.Wyeth Holdings Corp. & anothr v. Sun Pharmaceuticals Industries Ltd. 2004 (28) PTC 423 (Bom). Use of trademark ‘PACITANE’ by plaintiff, while respondent was using the mark ‘PARKITANE’ with respect to similar goods. No one can use the registered trademark of one company, even if products of both companies are not similar to each other: This was held in Honda Motors Co. Ltd. v. Mr.Charanjit Singh and Ors 2003(26) PTC 1(Del) Defendant Company was using the trade name HONDA for ‘Pressure Cookers’, where their application of registration of this trademark had been rejected.
Trans-border reputation of Company, Company has right to protect the invasion of its trademark: N.R.Dongare v. Whirlpool Corp. Ltd. 1996 (5) SCC 714. Defendants failed to renew their trademark ‘WHIRLPOOL’ and in the mean time the plaintiffs got registration of same. The suit is a passing off action brought by the plaintiff-respondents to restrain the defendants-appellants from manufacturing, selling, advertising or in any way using the trademark ‘Whirlpool’. It is also Creating the Confusion among the buyers. Court held though there was no sale in India, the reputation of the plaintiff company was travelling trans-border to India as well through commercial publicity made in magazines which are available or brought in India. Supreme Court upheld the decision of Delhi High Court.
Conclusion Role of an interim injunction in Intellectual Property is prominent since it prevents continued violation of rights claimed in the suit while the trial is still pending. In order to decide upon an application for the grant of an injunction, the court takes certain considerations into account that have evolved out of judicial deliberation.