Prof&Lawyer

PuttuGuruPrasad,
M.Com.,M.B.A.,L.L.B.,M.Phil.,PGDFTM.,

AP.SET.,ICFAITMF.,(PhD)atJNTUK.,
SeniorFacultyforManagementScience,

S&HDepartment,VVIT,Nambur,

1.
2.
3.
4.
5.

Bowman v. Monsanto Co.,

Abbott .Vs. Sandoz
Horlicks vs Kartick Sadhukan
Amar Nath Sehgal v. Union of
India,
Colgate Palmolive vs. Mr. Patel &
Others

6.

DIAMOND v. CHAKRABARTY

 Bowman

v. Monsanto Co., 569 U.S.

___ (2013) was aUnited States
Supreme Courtpatentdecision in
which the Court unanimously affirmed
the
decision
of
theFederal
Circuitthat thePatent Exhaustion
Doctrinedoes not permit a farmer to
plant and grow saved, patented seeds
without the patent owner's permission.

The

case arose after Vernon

Hugh Bowman, an Indiana
farmer,
boughttransgenic
soybeanseeds from a local
grain elevator for his second
crop of the season.

 Monsantooriginally

sold the seed

from which these soybeans were
grown to farmers under a limited
use license that prohibited the
farmer-buyer from using the seeds
for more than a single season
or from saving any seed produced
from the crop for replanting.

 The

farmers sold their soybean

crops (also seeds) to the local grain
elevator, from which Bowman then
bought them. After Bowman
replanted seeds for his second
harvest, Monsanto filed a lawsuit
claiming that he infringed on
their
patents
by
replanting
soybeans without a license.

 In

response, Bowman argued

that Monsanto's claims were
barred under the Doctrine of
Patent Exhaustion, because
all
future
generations
of
soybeans were embodied in the
first
generation
that
was
originally sold.

 In

a unanimous opinion written

byJusticeElena Kagan, the Supreme
Court ruled that Bowman's conduct
infringed upon Monsanto's patent
rights and that the doctrine of patent
exhaustion does not permit a
farmer to reproduce patented
seeds through planting and harvesting
without the patent holder's permission.

 The

Court held that, when a

farmer plants a harvested and
saved seed, thereby growing
another soybean crop, that
action
constitutes
an
unauthorized "making" of
the patented product.

 The

case garnered attention in part

due to its potential impact on
policy
about
Genetically
Modified
Crops
and
selfreplicating technologies, and due
to
the
involvement
of
JusticeClarence Thomas, who
previously served as a lawyer for
Monsanto.

 Commentators

noted,
however, that the Court's ruling
was narrow in scope, and did
not set a broad legal precedent
with respect to the applicability
of the doctrine of patent
exhaustion
to
selfreplicating technologies

 Abbott

v. Sandozwas aUS patent

lawcase argued before theUnited
States Court of Appeals for the
Federal Circuitthat established a
bright-line ruling regarding claims of
patent infringement relating to
disagreements
over
so-called
Product-by-Process" claims. The
case was decided on May 18, 2009

 Background

Abbott

Labshad a patent on a
specific drug calledOmnicefused to
combat ear infections. Lupin Limited
had a court rule that a generic form of
Omnicef it produced did not infringe
on Abbott's patent since their process
to make the drug was different.

 After

the court had ruled in Lupin's

favor, Abbott appealed and the
case was combined with several
other legal suits against smaller
pharmaceutical companies, and
thus was renamed Abbott v.
Sandoz. The federal court affirmed
the lower court's decision

 Case

For

several years, the courts have

disagreed
on
the
product-by-process
definition.Product-by-processrefers to
the question of determining if a
product is legally different from
another if it is created by a different
process.
Federal courts have offered contradictory
resolutions on the subject. The court
determined that a patent may limit itself if
it specifically defines the process of creation

 Decision

Despite

the legal discrepancies, the U.S.

Court of Appeals for the Federal Circuit
(CAFC) held that using a different
process in this case did not infringe on
Abbott's patent and ruled in Sandoz's favor,
along with ruling in favor of the other small
pharmaceuticals companies.
Since Abbott had not patented all
processes to create its drug, it could
not protect from the processes being
used by others

 Importance
This case further

enforces the product-byprocess definition, and holds that a patent

does not protect from infringement
through a different process unless
necessarily described.
Patent-holders
seeking to cover their
products entirely must find ways to
protect every process to create the
same item if they want complete
protection from infringement

This case revolves around the principle

of infringement of trademark and
copyright laws.

HORLICKS Limited (hereinafter referred to

asH) is a foreign company engaged in
manufacturing of a wide range of food
products, including foods for infants,
children and invalids, malted milk, biscuits,
toffees,
etc.
under
the
trademark
HORLICKS, of which it claims to be the
original registered owner.

 The

trademark 'HORLICKS' was

registered in India in relation to foods
for infants, children as well as mailed
milk as early as 1943, for biscuits in
1961 and in respect of toffees in 1966.
H is also the owner of copyright of
HORLICKS label and is exclusively
entitled to reproduce and alter the
features of the HORLICKS label in any
material form as it deems fit.

 Kartick

Confectionery (hereinafter
referred to as K) started manufacturing
a similar look-alike product, namely,
toffees
under
the
trademark
HORLIKS infringing the trademark
rights enjoyed by 'HORLICKS'.
K also reproduced the label of H
thereby amounting to the infringement
of the copyright of the latter.

H contended that since the consumers of

the
product
under
the
trademark
HORLICKS included infants, children and
adults it was the obligated to ensure that
the quality and standard of the product met
the prescribed requirements under the law.
They further stated that they ensured that
the
products
under
the
trademark
HORLICKS were made under strict
hygienic conditions.

Accordingly, if K is permitted to use the

challenged trademark HORLIKS, the right
of which was never granted neither
permitted by H, the latter was at all times
at a risk of facing the consequences of Ks
conduct and unauthorized use.
Hence they filed for a suit seeking to
permanently restrain K from infringing the
H's trademark HORLICKS and also its
copyrights which it enjoyed over the
product.

Single Judge Bench of the Delhi

High Court comprising of Justice B
Chaturvedi found out that H was
indeed the original registered
owner of the trademark HORLICKS
in respect of food for children,
malted milk, biscuits and toffees
and all other products as a result of
prior marketing and registration.

 With

regards to toffees registration

was done in India in 1966. And the
company carried out various
advertisements of its products
under the trademark HORLICKS
and thereby enjoyed sufficient
goodwill and reputation for its
products in India.

The court ruled that use of the label

and trademark HORLIKS by K in
respect of toffees is very likely to
cause confusion among the people.
It would thereby lead to deception,
majorly as a result of K having
copied the trademark HORLICKS
and also its label as and how it
appears
on
the
products
manufactured and marketed by H.

 Accordingly

the
court
restrained
K
from
manufacturing
and
selling
toffees or other related goods
under the trademark HORLIKS
or under any other name that
is similar in expression to Hs
trademark HORLICKS.

Further

the court barred K

from reproducing, printing or
publishing any label which
was a mere reproduction or
imitation of Ks HORLICKS
label, thereby protecting the
latters copyright to the label.

This

is a landmark case
decided by the Delhi High
Court which for the first
time upheld the moral
right of an author for his
work under the Indian
Copyright Act.

 Amar

Nath Sehgal (hereinafter

referred to as the plaintiff) was a
renowned Artist and Sculptor.
He created a Mural to be placed
in the lobby of Vigyan Bhawan, a
premier convention center of
Government of India, in New
Delhi.

 It

was done at the direction of

the appropriate authorities of
the convention center. In the
year 1979 the plaintiff came
to know that the mural created
by him was removed from the
lobby of the convention center
away from the public view.

 This

was done without the

prior consent or permission
of the plaintiff. Thereafter the
plaintiff
made
several
requests to the appropriate
authorities to restore the mural.
However, in spite of that the
mural was not restored.

Aggrieved by this the plaintiff filed a

suit before the Delhi High Court under
the Section 57 of the Copyright Act,
1957 for violation of his rights.
He sought a permanent injunction
against
the
authorities
of
the
convention center, thereby restraining
them from distorting or damaging
his mural. And to further pay him the
damages for the same.

 The

case was heard by the Single

Judge Bench of the Delhi High
Court comprising of Justice P
Narendra jog.
He observed that the author had a
express
right
in
law
to
preserve, protect and nurture his
creations through his moral rights.

Further

that the Section 57

of the Copyright Act enables
to protect the cultural
heritage of the country
through the moral rights of
the artist.

 The

section provides that the author

has the right to restrain or claim
damages
in
respect
of
any
distortion, mutilation, modification
or other act in relation to the said
work which is done before the
expiration of the term of copyright if
such distortion, mutilation, modification
or other act would be prejudicial to
his honor or reputation.

Thus,

the court ruled that the

plaintiff had the right to
maintain an action under
Section 57 even though
the copyright of the mural
vested with the authorities
of the convention center.

 It

further
held
that
the
authorities not only violated
the plaintiff's moral rights
with respect to the mural but
also violated the integrity of
the work in relation to the
cultural heritage of the
country as such.

 Hence,

the court ordered the

authorities of the convention
center
to
return
the
remainder of the mural to
the plaintiff. And also to pay
the damages to the plaintiff
for all the damage caused to
his work.

 This

is a case relating to the

legal
principle
of
infringement
of
a
trademark. It was decided by
a Single Judge Bench of the
Delhi High Court comprising of
Justice M Mudgal.

 Colgate

Palmolive
Co.
Limited (hereinafter referred to
as the plaintiffs) is a company
that has been manufacturing
and
marketing
dental
products in India under the
well-known
trademark
'COLGATE' since 1937.

 The

company undoubtedly is also an

international leader in the trade of
tooth paste and other dental related
products. The plaintiffs registered their
trademark in India in the year 1954.
Since then they have always marketed
their products in red cartons which
had the word COLGATE inscribed in
white on it. They used a particular
font for printing the trademark on the
cartons.

 Further

they had even registered

their label relating to colors in
India in the year 1959.
From then on they have been
exclusively enjoying the ownership
rights
over
the
trademark
'COLGATE' and also the label
containing the red and white
colors inscribed on it.

 In

the year 2003 the plaintiffs came

to know that Mr. Patel and his
company(hereinafter referred to as
the defendants) were using the
plaintiff's COLGATE trade dress
in the packaging of their
products with relation to the
layout and color combination of
the cartons.

The defendants used the word 'AJANTA'

printed in white color in a red
background in their cartons.
Subsequently the plaintiffs filed a suit
before the Delhi High Court seeking a
permanent injunction against the
defendants, thereby restraining them
from using the trade dress that
was similar in layout and appearance
even though the names printed on the
cartons were different.

 They

contended
that
the
defendants had infringed their
trademark and copyrights.
And further that they were
indulging
in
unfair
competition by trying to sell
their products using the brand
name of trademark COLGATE.

 On

the other hand, the defendants

contended that there was nothing
distinctive in the color combination
of the plaintiff's container and that
the plaintiff could not have a
trademark in color combination.
Further they claimed that the red
and white label was common to
the toothpaste trade.

 The

Honorable Judge observed that

essential feature of the plaintiffs' mark
was COLGATE inscribed in white color
on a red background and not merely
red and white color combination
alone.
He held that the printing of the word
AJANTA on the defendants cartons in
white color on a red background does
not give rise to any infringement of
the plaintiffs trade dress.

Also affirmed the contention of the

defendants that red was a basic
color and the red & white color
combination is common to the
tooth paste trade in the domestic
as well as the international market.
Hence
there cannot be any
monopolization of the same by
any party.

 However,

he finally held that

the defendants were liable
for trying to sell their
products using the brand name
of COLGATE since there was
sufficient
resemblance
between the plaintiffs' and the
defendants' product.

 Further

the court ruled that if the

defendant alters the packaging there
would not arise any question of
infringement of the copyright and
trademark of the plaintiff.
Accordingly the court ordered them
to substitute gold for white color
in the description of AJANTA in their
cartons.

 Thus,

the injunction application

was disposed of by the court
and the defendants were
permitted to market their
products provided they made
the required alterations in
their packaging of the products.

Title

35
U.S.C.
101
provides for the issuance of
a patent to a person who
invents or discovers "any"
new
and
useful
"manufacture"
or
"composition of matter."

 Respondent

filed
a
patent
application relating to his invention
of
a
human-made,

genetically
bacterium

engineered

capable
of
breaking down crude oil, a
property which is possessed by no
naturally occurring bacteria.

A
patent
examiner's
rejection
of
the
patent
application's claims for the new
bacteria was affirmed by the
Patent Office Board of Appeals
on the ground that living

things are not patentable

subject matter under 101.

The Court of Customs and

Patent Appeals reversed,
concluding that the fact
that micro-organisms are
alive is without legal
significance for purposes
of the patent law.

 MR.

CHIEF JUSTICE BURGER delivered

the opinion of the Court.
We granted Certiorari to determine
whether a live, human-made
micro-organism
is
patentable
subject matter under 35 U.S.C. 101.
In 1972, respondent Chakrabarty,
a microbiologist, filed a patent
application, assigned to the General
Electric Co.

 The

application
asserted
36
claims related to Chakrabarty's
invention of "a bacterium from
the
genus
Pseudomonas
containing therein at least two
stable
energy-generating
plasmids, each of said plasmids
providing a separate hydrocarbon
degradative pathway.

 "1This

human-made, genetically
engineered bacterium is capable of
breaking down multiple components
of crude oil.
Because of this property, which is
possessed by no naturally occurring
bacteria, Chakrabarty's invention is
believed to have significant value
for the treatment of oil spills.

 2.Chakrabarty's patent claims were of

three types:
First, process claims for the method of
producing the bacteria;[447 U.S. 303,
306]

Second,

claims for an inoculums

comprised of a carrier material
floating on water, such as straw, and
the new bacteria;

and third,
themselves.

claims

to

the

bacteria

 The

patent examiner allowed the

claims falling into the first two
categories, but rejected claims for the
bacteria. His decision rested on two
grounds:
(1)
that
micro-organisms
are
"products of nature," and
(2) that as living things they are not
patentable subject matter under
35 U.S.C. 101.

Chakrabarty

appealed the
rejection of these claims
to the Patent Office Board
of Appeals, and the Board
affirmed the examiner on
the second ground.

 3Relying

on the legislative history

of the 1930 Plant Patent Act, in
which Congress extended patent
protection to certain asexually
reproduced plants, the Board
concluded that 101 was not
intended to cover living things
such as these laboratory created
micro-organisms.

 The

Court refers to the logic

employed by Congress in choosing
not to perpetuate the "dichotomy"
suggested by Secretary Hyde.
Ante, at 313.
But by this logic the bacteria at issue
here are distinguishable from a
"mineral . . . created wholly by
nature" in exactly the same way as
were the new varieties of plants.

If a new Act was needed to provide

patent protection for the plants, it
was equally necessary for bacteria.
Yet Congress Provided for patents on
plants but not on these bacteria.
In short, Congress decided to make
only a subset of animate "humanmade
inventions,"
"ibid.,
patentable.

Prof&Lawyer.PuttuGuruPrasad,
M.Com.,M.B.A.,L.L.B.,M.Phil.,

PGDFTM.,AP.SET.,ICFAITMF.,(PhD)atJNTUK.,

SeniorFacultyforManagementSciences,
VasireddyVenkatadriInstitureofTechnology

Nambur,Guntur,A.P
Cell:9394969898,9059457336
Email:pgpjntuk@gmail.com