SHAPE SURVIVES DESIGN: TRADEMARK PROTECTION ENDURES BEYOND EXPIRY

Case: Reckitt Benckiser (Harpic) matter vs Godrej (Spic)

Order dated: 25 February 2026 (Ad Interim Order)

Court: Calcutta High Court 

Case Background

The dispute arises from a trademark infringement suit concerning the well-known “HARPIC” toilet cleaner brand. The Petitioner, a multinational entity engaged in the manufacture and sale of health and hygiene products, asserted rights over the “HARPIC” mark, including its distinctive bottle shape and cap configuration.

The mark traces its origin to 1920, with Indian registration obtained in 1979. The product entered the Indian market in 1984 with a unique trade dress. A design registration for the bottle (No. 191291) was secured in 2002, though it has since expired. The Petitioner continues to hold subsisting trademark registrations, including those depicting the product configuration.

The dispute concerns the Respondent’s “Godrej Spic” toilet cleaner, which the Petitioner alleges adopts a deceptively similar bottle shape and overall appearance, amounting to infringement under the Trademarks Act, 1999. At the interim stage, the claim was confined to statutory infringement, excluding passing off.

Issues for Consideration

The Court considered:

• Whether trademark protection extends to product shape despite the expiry of design rights;
• Whether the Respondent’s bottle configuration infringes the Petitioner’s registered trademark;
• Whether the features claimed are distinctive source identifiers or merely functional/common to trade.

Submissions of the Parties

Petitioner’s Submissions

The Petitioner contended that:

• The bottle shape, cap, and trade dress constitute protectable trademark elements;
• The statutory framework permits protection of non-conventional marks, including shapes;
• Expiry of design protection does not extinguish trademark rights where distinctiveness exists;
• The Respondent’s adoption amounts to deliberate imitation of a well-known product configuration.

Interim relief was sought restraining the Respondent from using deceptively similar packaging.

Respondent’s Submissions

The Respondent argued that:

• The design has expired and entered the public domain;
• No standalone trademark registration exists for the bottle shape;
• Registrations relied upon are composite/device marks and do not confer exclusivity over configuration;
• The bottle shape is generic and commonly used in the industry;
• Exclusivity cannot be claimed over individual elements of a composite mark.

Observations of the Court

The Court observed that:

• Trademark law recognizes non-conventional marks, including shapes, if they function as source identifiers;
• Expiry of design protection does not preclude trademark protection, provided distinctiveness is established;
• The Petitioner holds prima facie valid trademark registrations, including depictions of the bottle and cap;
• Such registrations carry a presumption of validity under the statute, subject to challenge;

The Court also noted prior judicial recognition of the Petitioner’s rights in the HARPIC bottle configuration.

On comparison, the competing products were found to be strikingly similar in shape and appearance, giving rise to a likelihood of consumer confusion. The Respondent’s adoption appeared prima facie deliberate.

Interim Directions

The Court held that:

• A strong prima facie case of infringement was established;
• The balance of convenience favoured the Petitioner;
• Irreparable harm would ensue absent protection;

Accordingly, an ad interim injunction was granted restraining the Respondent from using the impugned packaging, limited to trademark infringement. Directions were issued for the completion of pleadings.

Conclusion
The decision underscores the nuanced interface between design and trademark regimes. While design protection is time-bound, trademark law may extend protection to product shapes that acquire distinctiveness and function as source identifiers.

At the interim stage, the Court reaffirmed that subsisting trademark registrations,  particularly those depicting product configuration, can sustain exclusivity even after expiry of design rights, subject to the broader principle that functional or generic features must remain available in the public domain.

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AI NOT AN INVENTOR: PATENT OFFICE REJECTS DABUS APPLICATION AND LIMITS PRE-GRANT OPPOSITION SCOPE

Order dated: 15 April 2026

Statutory Context: Patents Act, 1970

Nature of Proceedings: Refusal under Section 15 and Pre-Grant Opposition under Section 25(1)

Case: Inventorship of DABUS (AI) in India Rejected Application No. 202017019068

Case Background

The present matter arises from Indian Patent Application No. 202017019068, filed by Stephen L. Thaler, wherein an artificial intelligence system, DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), was named as the sole inventor of a food container invention.

The Indian Patent Office issued two separate orders:

• A refusal of the patent application under Section 15 of the Patents Act, 1970; and
• A rejection of a pre-grant opposition filed by Dr. Kalyan C. Kankanala under Section 25(1).

While the pre-grant opposition was dismissed, the reasoning in the refusal order substantially reflects and incorporates several statutory, interpretative, and comparative law arguments advanced by the Opponent, particularly on the issue of inventorship and proof of right.

Issues for Consideration

The proceedings raised two distinct but related legal issues:

• Whether an artificial intelligence system can be recognised as a “true and first inventor” under the Patents Act, 1970;
• Whether questions of inventorship fall within the permissible grounds of pre-grant opposition under Section 25(1).

Contentions of the Parties

Applicant’s Position

The Applicant contended that:

• The Patents Act does not expressly prohibit recognition of non-human inventors;
• Ownership of the AI system (DABUS), its source code, and the underlying hardware confers entitlement to the invention;
• Declarations made under the Patent Cooperation Treaty (PCT), including Rule 4.17(ii), satisfy inventorship requirements;
• Evolving technological realities necessitate a broader interpretation of inventorship under patent law.

Opponent’s Submissions

The Opponent advanced detailed statutory and comparative arguments, many of which were reflected in the refusal order. Key submissions included:

• Natural Person Requirement: The statutory framework distinguishes between Applicants and inventors, and inventorship is confined to natural persons capable of holding and transferring legal rights;
• Statutory Scheme (Sections 6, 7, 10): These provisions collectively presuppose an inventor with legal capacity, including the ability to assign rights and be represented;
• Declaration Requirements: Mandatory disclosures such as nationality, address, and signature cannot be fulfilled by an AI system;
• Interpretation of “True and First Inventor”: Section 2(1)(y), read harmoniously with other provisions, implies a human inventor;
• Meaning of “Person”: The term does not extend to artificial intelligence systems in the absence of express statutory recognition;
• Inventive Step Standard: The benchmark of a “person skilled in the art” inherently presumes human cognition;

The Opponent further relied on international jurisprudence, including decisions from the United Kingdom, United States, European Patent Office, and Australia, all of which have declined to recognise AI systems as inventors.

Findings of the Patent Office

(A) Section 15 Order: Substantive Determination on Inventorship

The Patent Office held that:

• The statutory framework under Sections 6, 7, and 10 necessarily presupposes a human inventor capable of holding and transferring legal rights;
• An artificial intelligence system lacks legal personality and cannot execute declarations, assign rights, or possess attributes such as nationality;
• Ownership of an AI system does not confer entitlement to inventions allegedly generated by it;
• Declarations under the PCT cannot override mandatory requirements under Indian law;

The Office further clarified that policy considerations and proposals for reform cannot override the express statutory framework. Patent rights being purely statutory, inventorship must be determined strictly within the provisions of the Act.

Accordingly, the application was refused, conclusively holding that an AI system cannot be recognised as the “true and first inventor” under the current legal regime.

(B) Section 25(1) Order: Procedural Scope of Pre-Grant Opposition

In relation to the pre-grant opposition, the Patent Office held that:

• Section 25(1)(f) is limited to challenges on patentability and does not extend to questions of inventorship or entitlement;
• Issues relating to inventorship fall within examination and refusal proceedings, not opposition;

Additional grounds raised by the Opponent were also rejected:

• Section 8 (Disclosure): The Applicant had complied with disclosure requirements by furnishing details of corresponding foreign applications;
• Section 3(b): No evidence was provided to establish that the invention violated public order or morality;
• Section 3(c): The claimed invention constituted a technical product and not a mere discovery;

Accordingly, the pre-grant opposition was dismissed on procedural and substantive grounds.

Comparative Global Position

The decision aligns India with the prevailing international position rejecting AI inventorship. Courts and patent offices in jurisdictions including the United Kingdom, United States, European Union, and Australia have consistently held that inventorship is limited to natural persons.

While South Africa granted a DABUS patent, the same was under a non-examining, depository system, distinguishing it from jurisdictions applying substantive examination standards.

Conclusion

The twin orders clarify the legal position in India as follows:

• Artificial intelligence systems cannot be recognised as inventors under the Patents Act, 1970;
• Questions of inventorship are to be determined during examination and are not maintainable as grounds of pre-grant opposition;
• Compliance with statutory requirements under Sections 6, 7, and 10 is mandatory and cannot be circumvented through international filings or policy arguments;

The decision reinforces a strict statutory interpretation of inventorship while aligning Indian practice with global jurisprudence. At the same time, it highlights the need for legislative consideration of AI-generated inventions, particularly in light of rapid technological advancements.

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HIGH-VALUE ENFORCEMENT UPHELD: DELHI HIGH COURT AFFIRMS ANTENNA PATENT AND AWARDS ₹152 CRORE; INTRODUCES “DARTBOARD MODEL”

Court: Delhi High Court

Nature of Proceedings: Patent Infringement Suit with Counterclaim for Revocation

Case: Communication Components Antena Inc vs Rosenberger Hochfrequenztechnik Gmbh

Background

In a detailed judgment spanning over 250 pages, the Delhi High Court adjudicated a significant patent dispute concerning Indian Patent No. 240893 (“IN’893”), titled “Asymmetrical Beams for Spectrum Efficiency.” The patent, held by a Canadian telecommunications technology company, relates to split-sector antenna systems that utilise asymmetrical beam patterns to increase network capacity without expanding geographic coverage.

The defendants, including a German antenna manufacturer and its affiliates, were alleged to have manufactured and commercialised multi-beam antennas infringing the suit patent. The dispute formed part of a broader international enforcement effort, with parallel proceedings in multiple jurisdictions.

Issues for Consideration

The Court examined the following principal issues:

• Whether the patent was liable to revocation under Section 64(1) of the Patents Act, 1970 on grounds such as lack of novelty, inventive step, insufficiency, and non-patentability;
• Whether the defendants’ products infringed the suit patent;
• Whether the plaintiff was entitled to injunctive relief and damages, and the appropriate basis for quantification.

Findings on Validity

The Court rejected the revocation challenge in its entirety, holding that the cited prior art did not anticipate the claimed invention. It further found that the invention demonstrated a clear inventive step, particularly in departing from conventional symmetrical beam designs. The Court also observed that the specification sufficiently disclosed and enabled the invention for a person skilled in the art. Additionally, it clarified that decisions of foreign patent authorities, including those of the European and Chinese offices, were not determinative within the Indian legal framework.

“Dartboard Model” and Prior Art Analysis

In a notable doctrinal contribution, the Court introduced the “Dartboard Model” to critique the defendants’ reliance on multiple unrelated prior art references. It was observed that selectively extracting isolated elements from disparate sources, without a coherent technical linkage, amounted to impermissible hindsight reconstruction.

The Court further cautioned against the increasing use of artificial intelligence tools to generate extensive but disconnected prior art citations, emphasising the need for judicial scrutiny to prevent dilution of the inventive step threshold.

Infringement Determination

On infringement, the Court found that the defendants’ antenna systems produced beam patterns substantially corresponding to those claimed in the patent. The plaintiff substantiated its case through technical simulations and comparative modelling.

The defendants’ argument that any asymmetry was incidental was rejected, particularly in light of their own technical and marketing materials indicating deliberate adoption of the patented configuration.

Damages and Relief

The Court awarded damages of approximately ₹152 crore, calculated on a royalty basis at 20% of the defendants’ total antenna sales. The rate was supported by comparable licensing benchmarks and the finding of wilful infringement.

In addition, the Court:

• Granted a permanent injunction restraining further infringement;
• Directed disclosure of any additional sales for recalculation of damages;
• Awarded interest at 7% per annum in case of delayed payment;
• Issued a certificate of validity under Section 113 of the Patents Act; and
• Granted costs in favour of the plaintiff.

Conclusion

The ruling marks a significant contribution to Indian patent jurisprudence. It reinforces rigorous standards for invalidity challenges, clarifies the limited evidentiary value of foreign decisions, and adopts a structured approach to damages based on royalty principles.

The introduction of the “Dartboard Model” provides a useful framework for assessing prior art combinations, particularly in an era of AI-assisted patent searches. Overall, the judgment strengthens the enforcement landscape by balancing robust protection of patent rights with disciplined scrutiny of invalidity defences.

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UNREASONED REFUSAL ON ATOMIC ENERGY GROUNDS SET ASIDE: COURT REAFFIRMS NEED FOR SPEAKING ORDERS

Statutory Framework: Patents Act, 1970; Atomic Energy Act, 1962

Proceedings: Writ Petition challenging refusal of patent application

Case: Huntington Alloys Corporation vs Union Of India

Background and Procedural History

The Petitioner challenged orders passed by the Patent Office and the Department of Atomic Energy (DAE) refusing its National Phase patent application (PCT/US2009/040019; IN’4211), contending that such orders were without jurisdiction, unreasoned, and reflective of non-application of mind.

The application, filed in 2008 and published under Section 11A of the Patents Act, related to an invention titled “Ultra Supercritical Boiler Header Alloy and Method of Preparation.” Despite a request for examination filed in 2012, no substantive examination steps were undertaken for several years.

In November 2020, the Deputy Controller referred the application to the DAE under Section 20(6) of the Atomic Energy Act, expressing a prima facie view that the invention may not be patentable. By order dated 6 April 2021, the DAE concluded that the invention related to atomic energy and directed the refusal of the application. These orders were impugned in the present proceedings.

Submissions of the Parties

The Petitioner argued that the impugned orders were legally unsustainable as they lacked reasons and failed to demonstrate application of the mind. It was submitted that the invention related to a high-temperature nickel-based alloy for boiler applications and did not fall within the scope of atomic energy as defined under the Atomic Energy Act. The Petitioner further contended that while the statutory framework permits reference to the Central Government, any such determination must be supported by cogent reasoning. In the absence of reasons, the Petitioner was deprived of a meaningful opportunity to respond or to amend the specification under Section 65 of the Patents Act,, 1970.

Respondents’ Contentions

The Respondents maintained that the invention involved materials such as niobium and tantalum, warranting reference to the DAE. It was argued that under Section 4 of the Patents Act, read with Section 20 of the Atomic Energy Act, the Central Government’s determination is final and binding. Once the DAE concludes that the invention relates to atomic energy, refusal necessarily follows, leaving no scope for further adjudication. The delay in examination was attributed to administrative constraints, including a shortage of examiners.

Court’s Analysis

The Court examined the statutory interplay between the Patents Act and the Atomic Energy Act, acknowledging that the Central Government is empowered to refuse patent applications involving atomic energy in furtherance of national policy. Section 4 of the Patents Act imposes a bar on the grant of patents for inventions falling within Section 20(1) of the Atomic Energy Act.

However, the Court emphasised that the exercise of such statutory power must conform to established principles of administrative law.

Requirement of Reasoned Orders

A central deficiency identified by the Court was the absence of reasoning in the DAE’s decision. The order merely concluded that the invention related to atomic energy without explaining how it satisfied the statutory definition or addressing the Petitioner’s technical assertions.

The Court held that reasoned orders are essential to ensure transparency, demonstrate application of mind, and enable effective judicial review. An unreasoned decision not only undermines accountability but also deprives the Applicant of the ability to respond to objections or take corrective steps.

Opportunity to Amend Specification

The Court further observed that the statutory scheme contemplates an opportunity for the Applicant to amend the specification where objections arise under the atomic energy bar. In the present case, the absence of reasoning effectively foreclosed this statutory remedy, thereby prejudicing the Petitioner’s rights.

Reference to Precedent

Reliance was placed on prior judicial decisions, including Ceres Intellectual Property Company Limited v. Controller of Patents, where a similar unreasoned refusal based on DAE directions was set aside. The Court reiterated that even where statutory authority exists to refuse a patent, such power must be exercised through reasoned decision-making.

Observations on Legislative Developments

The Court noted recent legislative developments, including the enactment of the Sustainable Harnessing and Advancement of Nuclear Energy for Transforming India Act, 2025, which signals a more facilitative approach towards nuclear innovation. However, as the legislation had not yet been operationalised, the existing statutory framework continued to govern the field.

Conclusion and Directions

The Court held that the impugned orders were unsustainable for lack of reasoning and transparency. Accordingly, the refusal of the patent application was set aside, and the matter was remanded for fresh consideration. The competent authority was directed to pass a reasoned order upon reconsideration and to permit the Petitioner to place additional material on record in support of its application.

Significance

The decision underscores that even in matters involving national interest, such as atomic energy, statutory discretion must be exercised in a reasoned and transparent manner. It reaffirms that procedural fairness, including the right to understand and respond to objections, remains a fundamental component of the patent adjudication process.

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USPTO LAUNCHES PIER PILOT: APPLICANT-LED EXAMINATION INTRODUCED FOR PCT NATIONAL STAGE FILINGS

Authority: United States Patent and Trademark Office

Statutory Context: Patent Cooperation Treaty; 35 U.S.C. § 371; 37 C.F.R. § 1.105

Program Duration: 9 April 2026 – 9 April 2027

Overview

The United States Patent and Trademark Office (USPTO) has introduced the PCT Informed Examination Request (PIER) Pilot Program, signalling a procedural shift in the handling of select U.S. national stage applications originating from PCT filings. The initiative seeks to assess whether requiring Applicants to affirmatively confirm their intent to proceed with examination, based on international phase work products, can enhance efficiency, reduce pendency, and improve overall examination quality.

Key Features of the Program

Under the pilot, certain unexamined national stage applications filed under 35 U.S.C. § 371 will receive a formal requirement for information from the USPTO. This communication will reference relevant international phase documents, including the International Search Report (ISR), Written Opinion, any Supplemental International Search, and the International Preliminary Report on Patentability (IPRP), where available.

Applicants are required to respond within two months (extendable up to six months) by electing one of three options: proceeding with examination, requesting deferral of examination for up to 12 months, or expressly abandoning the application. Failure to respond within the prescribed timeline will result in deemed abandonment.

Shift from Conventional Practice

The PIER Pilot Program marks a departure from traditional U.S. practice, where examination typically proceeds automatically without a formal request. By introducing an affirmative step requiring Applicants to confirm their intent, the USPTO has, in limited circumstances, aligned its procedure with jurisdictions that mandate examination requests.

The USPTO aims to promote early-stage portfolio rationalisation, reduce examination backlog, and improve examination quality through more effective utilisation of PCT work products. The program is premised on the expectation that Applicants, particularly those facing adverse international phase findings, may opt not to pursue certain applications, thereby reducing the overall examination burden.

Strategic, Cost, and Procedural Considerations

The PIER Pilot Program introduces additional compliance obligations, requiring Applicants to closely monitor deadlines and make early, informed decisions on patentability, commercial value, and prior art. While this accelerates prosecution strategy, it also offers opportunities, such as filing preliminary amendments and deferring examination for up to 12 months to align with global filings. However, such deferral may impact patent term adjustment (PTA), and failure to respond within the prescribed timeline carries the significant risk of deemed abandonment.

From a cost perspective, the program may support more efficient portfolio management but imposes an added transactional burden, as Applicants must substantively evaluate international phase outputs within a limited timeframe. Importantly, no fee refunds are available upon abandonment.

Applicants may consider alternative filing routes, such as bypass continuations or direct non-provisional filings, to avoid potential inclusion in the program, though these options involve distinct procedural trade-offs.

The program also presents inherent limitations, including a lack of clarity on selection criteria, an inability to opt out once selected, and uncertainty regarding its long-term effectiveness in reducing backlog and improving examination outcomes.

Conclusion
The PIER Pilot Program reflects a shift towards greater Applicant participation in examination management, emphasising early and informed decision-making. While it offers opportunities for strategic alignment and streamlined prosecution, it also imposes new procedural obligations and risks. Its ultimate effectiveness will depend on Applicant response patterns and the USPTO’s implementation during the pilot phase.

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