In the matter of Vivek Kochher & Ors. v. KYK Corporation Limited and Ors. [2018(74) PTC 120 (Del)], the Delhi High Court decided (on November 3, 2017) a writ petition against IPAB’s order of allowing rectification of trademark registration for mark KYK.

KYK Corporation had sought rectification of KYK before the IPAB on the grounds of identity of marks and a false prior use claim. The IPAB order had noted that while the Registrant had claimed prior use since 1996 (for class 12 goods) and since 2000 (for class 7 goods), it had failed to produce any evidence prior to 2005.

The Court examined whether the IPAB’s finding that there was no evidence prior to 2005 was ex facie erroneous, as alleged in the Writ Petition.

On this, the Court observed that “…none of the said invoices are prior to the year 2005 and, therefore, there was no evidence on record to show any invoice relating to the use of the impugned mark by KYK International…Thus, the finding of the IPAB that ‘there is no evidence prior to 2005’ is correct…”

The issue before the Court then was whether inability to prove the prior use date claimed in a trademark registration renders the registration invalid ab initio.

The Court appears to have decided in the affirmative, ultimately dismissing the petition, holding that “…conclusion of IPAB that the petitioners were unable to establish the use … warranting a rectification of the registered trademark cannot be faulted.”

In the matter of Christian Louboutin SAS v. Abubaker and Ors. [CS (Comm.) No. 890/2018], the Plaintiff sought a permanent injunction against the Defendants’ sale of red-soled shoes (notwithstanding the Defendant’s use also of its own trademark VERONICA for the shoes). The Plaintiff relied on its registered trademark for the colour red for the soles of women’s shoes. The suit as filed was taken up on the question of admission.

The Court examined (vide its May 25, 2018 decision) whether the suit plaint set out a presentable cause of action that could be tried: “…taking the contents of the plaint as correct, whether there exists a legal entitlement in the plaintiff to claim the reliefs as prayed in the suit.”

The Court observed that it is clear from the definitions of ‘mark’ and ‘trademark’ in the Trade Marks Act, 1999 (each of which uses the expression ‘a combination of colours’), that a single colour does not qualify as either.

The Plaintiff argued that a single colour is capable of acquiring distinctiveness through use, and once distinctiveness is acquired the single colour can become a valid trademark. The Court, however, rejected this argument, holding that “…this argument ignores the first basic sine qua non of a thing becoming a trademark i.e. of whatever is sought to be claimed as a trademark must first also be a mark.”

The Court accordingly dismissed the suit at the threshold itself, holding that even if the facts as set out in the plaint were to be taken as entirely true, there is simply no cause of action presented thereby that can possibly be taken up for trial.

The Delhi High Court has held that the .In Domain Name Dispute Resolution Policy (INDRP) does not permit an Arbitrator to confiscate the domain name.

Lens.com, Inc. had filed a complaint under the INDRP against the respondent, seeking transfer of the domain name <lens.in> registered in favour of the respondent, to itself. The Arbitrator held that since the Complainant had failed to prove its rights in the disputed domain name and the Respondent claimed to be unrelated to the domain named, the disputed domain name be cancelled, and be confiscated by the Registry. Aggrieved with this Award, the Petitioner approached the Delhi High Court [Lens.com, Inc. v. Ju J Friend International [OMP (Comm.) 223/2016], alleging that (1) the Arbitrator does not have the power to confiscate the domain name; and (2) upon cancelling the domain name, its transfer to the Petitioner was mandatory.

The Delhi High Court observed that the INDRP does not make transfer of a domain name mandatory upon its cancellation; and that the complainant would independently have to establish its right to such a domain name for it to be transferred. The Delhi High Court set aside the Arbitrator’s direction that the domain name be confiscated, observing that such a direction could not be sustained.

In the matter of Monsanto Technology LLC and Ors. v Nuziveedu Seeds Ltd. and Ors. [CS (COMM) 132/2016], Defendants (ex-licensees of Monsanto), in response to Monsanto’s claim of infringement of its patent, filed a counter-claim of invalidity of patent.

A Division Bench of the Delhi High Court invalidated Monsanto’s patent [claiming nucleotide sequence (of Cry2Ab gene) and method of transforming plant cells therewith] under section 3(j) of Patents Act, proceeding thus to reject the claim of infringement of the patent.

The court found that since nucleotide sequence has no existence of its own, it is not a “microorganism”, and thus unpatentable under section 3(j).

The Court held “Monsanto cannot assert patent rights over the gene that has thus been integrated into…transgenic plants…[T]he reason why this court concludes that Section 3 (j) prohibits grant of patents to Bt. trait induced varieties is that they are parts of “seed””.

With respect to the method of transformation, the Court held that “the process of creation of such seeds/plants are also excluded from patentability as they squarely fall within the meaning of an “essentially biological process” that is exempted from patentability within the meaning of section 3(j)”. The court observed: “the moment the DNA containing the nucleotide sequence (subject patent) is hybridized to produce the transgenic seeds/plants; the seeds/plants fall within the purview of the PV Act”.

The Court granted Monsanto a 3 month grace period to seek registration under The Plant Varieties Act.