Saikrishna & Associates updates

Is extraterritorial application of Copyright Act possible?
Saikrishna & Associates
  • Intellectual Property
  • India
  • May 23 2016

In Banyan Tree Holding v A Murali Krishna Reddy the Delhi High Court clarified the importance and scope of the special jurisdiction provision (ie, Section 62 of the Copyright Act 1957). However, there seems to be a school of thought that Section 62 vests Indian courts with untrammelled long-arm jurisdiction even in strictly extraterritorial situations.

Special jurisdiction provisions: how special are they?
Saikrishna & Associates
  • Intellectual Property
  • India
  • November 23 2015

The Supreme Court recently issued its much-anticipated decision in IPRS v Sanjay Dalia. The case considered the interpretation of the special jurisdiction provisions in Section 62 of the Copyright Act and Section 134 of the Trademarks Act. The court held that if a cause of action arises at the place where the plaintiff's principal office is located, it cannot rely on Section 62 or Section 134 to institute a suit where its branch office is located.

Trademark infringement remedies available under Companies Act 2013
Saikrishna & Associates
  • Intellectual Property
  • India
  • July 13 2015

A streamlined framework for rectification of a company name is now available under the Companies Act 2013. Under the new act, the registered proprietor of a trademark can apply for rectification of a company name that is identical to or too closely resembles the registered trademark. In addition, the owner of an unregistered trademark which is used as a company name may use Section 16(1)(a) of the act as an alternative remedy to a passing-off suit.

Conflicting views on recordation of patents, designs and geographic indications
Saikrishna & Associates
  • Intellectual Property
  • India
  • March 09 2015

Circular 41 was issued in order to clarify the rules regarding Customs' right to suspend the clearance of goods that allegedly infringe patents, designs or geographical indications. However, the circular is unclear, as it both clarifies that Customs must wait for a court order before suspending the clearance of allegedly infringing goods and states that Customs can suspend goods without a court order if it exercises extreme caution.

Does the Designs Act 2000 limit the value of damages in an infringement suit?
Saikrishna & Associates
  • Intellectual Property
  • India
  • November 03 2014

Section 22 of the Designs Act 2000 deals with piracy of registered designs and enumerates the reliefs available to design owners. A clear reading of Section 22(2) reveals that it provides two reliefs to registered design owners in the event of infringement. These two options are disjunctive in nature, which means that design owners must choose between the two.

Composite suits for infringement and passing off of registered designs
Saikrishna & Associates
  • Intellectual Property
  • India
  • April 28 2014

The Delhi High Court recently held that a composite suit for infringement of a registered design and a passing-off action is not maintainable. According to the court, two independent suits must be filed (although these can be tried together if there are aspects that are common to both suits), but a single composite suit is not possible. This conclusion has been questioned.

Courts address application of de minimis principle to copyright cases
Saikrishna & Associates
  • Intellectual Property
  • India
  • February 03 2014

The Copyright Act specifically provides for a window for certain acts that will not be considered an 'infringement' of works in which copyright subsists. The Indian courts have recently relied on the de minimis argument as a valid defence for infringement allegations, arguing that some issues are so minor in nature that the courts will not categorise them as contentious at all.

Does defence of invalidity differ from counterclaim for invalidation?
Saikrishna & Associates
  • Intellectual Property
  • India
  • October 07 2013

As patent litigation increases, so too does the importance of understanding the nuances of those provisions of the Patents Act that deal with suits for patent infringement, and the defences that can be raised therein. One such issue is whether the consequence of raising a defence of invalidity is the same as instituting a counterclaim to invalidate a patent under the act.

Court issues contrasting rulings on duty of disclosure in patent applications
Saikrishna & Associates
  • Intellectual Property
  • India
  • July 22 2013

The Indian Patent and Trademark Office (IPO) has established rules concerning the submission of material information known to a patent applicant. These rules define an applicant's duty of disclosure. Two decisions of the Delhi High Court have made clear that it is better to be cautious than to risk revocation of a patent on procedural grounds. Applicants should therefore disclose all material information in their control to the IPO.

Supreme Court offers limited definition of 'efficacy' under Patents Act
Saikrishna & Associates
  • Intellectual Property
  • India
  • May 07 2013

In a recent judgment the Supreme Court finally interpreted the term 'efficacy' in the context of patentability. The court did not completely eliminate from the definition any non-therapeutic properties of a known form that could be understood to increase efficacy. As the court refused to rule on the exact scope of 'therapeutic efficacy', the case sets a limited precedent and leaves room for further discussion.

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