Article
Defending the home turf: Madras HC reaffirms local goodwill over global stature
By Divya Vishvapriya
In a globalization-era legal battle, the Madras High Court has recently adjudicated a trademark dispute between an international retail giant and an Indian domestic entity. The article in this issue of IPR Amicus notes that the decision serves as a critical touchstone for the ‘territoriality principle’ in intellectual property law, balancing the rights of global brands against established local businesses. According to the author, the decision underscores that mere global presence does not automatically equate to enforceable goodwill within Indian borders. Elaborately discussing the Court’s decision, the author notes that the decision serves as a message for foreign corporations, emphasizing that to protect their IP in India, they must do more than rely on their global stature; they must actively engage with and establish their presence in the Indian market.
Statute Update
- Designs Act, 2000 – DPIIT shares Concept Note on proposed amendments
Ratio decidendi
- Trademarks – Addition of word ‘Shree’ before a mark does not alter its visual, phonetic, or conceptual identity – Rajasthan High Court
- Right to seek patent is defeated if Patent Office takes own time to decide application and mechanically issues notices for every pre-grant opposition – Madras High Court
- Trademarks – Filing of evidence in case of opposition – Deemed abandonment – Rule 46(2) held ultra vires Section 21 and read down to mean deemed abandonment of letting in evidence only – Madras High Court
- Patent application need not be rejected if NBA approval is not placed with the application and/or during the hearing – Delhi High Court
- Trademarks – RG-3 notice, intimating date of expiry of registration, is to be issued to proprietor – Non deposit of fee for change in authorized agent is not material – Delhi High Court
- Trademarks – Third party cannot make an application for ‘withdrawal of acceptance’ – Delhi High Court
News Nuggets
- Marks ‘Karim’s’ and ‘Gulshan-E-Karim’ – Supreme Court stays HC decision directing use of disclaimer
- Patent infringement in case of biosimilars – Mapping of product to claim
- Right to use publicly available information about someone when same is not disparagingly presented – Use of hyperlink to somebody’s website when not fatal
- Designs – Non filing of reply to FER when not fatal
- Patents – Separate hearings and orders required in case of opposition and examination respectively
- Marks ‘Gonyle’ and ‘Gaunyle’ when are not identical or deceptively similar
- Trademark ‘One for all’ is capable for registration in respect of books
- Can Competition Commission probe patent-linked disputes – SC to answer
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