IPR Amicus, March 2026

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Article

Why priority date matters: Madras High Court emphasises importance of reasoned orders

By Pooja Bawari and Prosenjit Chattopadhyay

The Madras High Court last year revisited a fundamental but often overlooked question in patent practice, namely how and when a claim is entitled to draw priority from a provisional specification. The judgment offers timely guidance on the application of Section 11 of the Patents Act, 1970, particularly where entitlement to priority forms the basis of a refusal. The article in this issue of IPR Amicus analyses the decision and its implications for patent prosecution and opposition practice. Exhaustively discussing the High Court decision, the authors note that the statutory requirement that a claim must be ‘fairly based on the matter disclosed’ in the provisional specification is not a mere formality and posits significant implications for prior art analysis. They also note that the decision emphasized the obligation of the Indian Patent Office to issue reasoned orders that address all material contentions raised by an Applicant.

Ratio decidendi
 

• Trademarks – ‘Chacha’ used in connection with sarees/garments is distinctive – Court also rejects plea of the mark being ‘common to trade’ – Delhi High Court
   
• Copyrights – Remedy against groundless threats when cannot be blocked – Bar under proviso to Section 60 when not applicable – Delhi High Court
   
• Trademark cancellation petition – Right to cross-examine witness of the respondent is not inherent – Delhi High Court
   
• Trademark rectification – Condition of one month notice under Rule 100(1) is mandatory – Delhi High Court
   
• Patent revocation – Identity of claims in suit patent and prior art is only required for Section 64(1)(a) to apply – Delhi High Court
   
• Patent about to expire – Courts should apply principles of balance of convenience and irreparable loss before interfering – Delhi High Court
   
• Trademark – Use of ‘Lotus Splash’ for face cleanser is not descriptive – Division Bench sets aside rejection of interim injunction – Delhi High Court
   

News Nuggets
 

• Trademarks application can be examined by officers attached to different ‘appropriate office’
   
• Patents – Rejection of application solely for non-sufficiency of disclosure is not correct
   
• Notice of impending expiry of the trademark to be sent to registered proprietor; change of authorized agent is not material
   
• Trademarks – ‘Prior user’ not relevant when entities applied for same mark on ‘proposed to be used’ basis and one of them subsequently starts using the mark
   
• Trademarks – Defense under Section 35 is available to incorporated entities as well
   
• Draft Kerala Intellectual Property Rights Policy – Traditional Knowledge Docketing System proposed