LKS IPR Amicus, December 2024

Patentability of computer related inventions – Court’s inconsistent approach underscores complexity but creates uncertainty

The Delhi High Court, in two of its recent decisions, demonstrated disparate approaches of assessing patentability of computer related inventions (CRIs) under Section 3(k) of the Patents Act, 1970. Notably, both judgments were delivered by the same Single Judge Bench of the Court on the same day. Discussing the two decisions, the article highlights that this underscores the complexity and nuanced nature of assessing patentability of CRIs under the Indian patent law. The authors (Prabhat Kumar, Jaya Pandeya, and Ankur Garg) note that it is unclear at present as to when does a CRI qualify as an ‘algorithm’, so as to constitute excluded subject matter despite the presence of technical effect. According to them, the confusion is particularly evident in cases where the invention is computer-implemented. They believe that a more precise definition of ‘algorithm’ in the context of Section 3(k) may provide greater predictability in how CRI applications are examined and evaluated.

Read the full article here.

The number game – Alphanumeric and numeral trademarks

The second article in this issue of IPR Amicus discusses a recent dispute wherein a well-known Indian airline has instituted a trademark infringement suit against a reputed Indian car manufacturer, over the use of its alphanumeric mark ‘6E’. Elaborately discussing as to what are alphanumeric and numeral marks, their registrability, Trademark Registry’s approach to distinctiveness, and jurisprudence on conflicts over such marks, the authors (Shivangi Rajan, Radhika Deekshay and Vindhya S Mani) note that it is evident that multiple factors are to be considered when adjudicating issues pertaining to alphanumeric or numeral marks. They highlight that the arbitrary nature of such marks in comparison to the goods/services concerned, attainment of secondary meaning in relation to the consumers, and rule of anti-dissection are few important things to be noted for this purpose.

Read the full article here.

Ratio decidendi

• Patents – Filing of Divisional Application on the day of grant of patent in original application is not fatal – Madras High Court
• Patents – Absence of proper analysis by Patent Office on applicant’s contentions is wrong – Court also permits applicant to file amendment application to explain its case – Madras High Court
• Trademark ‘THINBOOK’ is confusing with ‘THINKBOOK’ – Cancellation of registration of ‘THINBOOK’ directed – Madras High Court
• No copyright in manufacture and sale of garments – Punjab & Haryana High Court
• Domain name ‘Desimochi’ prima facie infringes rights of ‘Mochi’ – Bad faith not necessary – Bombay High Court
• ‘Dolobene’ and ‘Doloban’ – Petition for rectification of mark ‘Dolobene’ dismissed in absence of evidence of prior continuous use, limitation in filing and acquiescence – Madras High Court

News Nuggets

• Copyright infringement – ANI sues OpenAI questioning use of news data for training models
• Trademark dispute over ‘6E’ – IndiGo, Mahindra Electric battle it out
• Trademarks ‘Super Fuel’ and ‘Fuel’ for different products?

Read the full newsletter LKS IPR Amicus, December 2024 (Complete).........................

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