Wine Wars and Patent Perils
Also in this edition: Birkenstock's anti-counterfeiting blitz; Delhi HC schools Patent Controller on obviousness
Good evening! ✨
After a fortnight of courtroom theatrics and IP intrigue, The Inventive Brief brings you the latest developments shaping the intellectual property landscape.
From ancient wine disputes crossing continents to modern-day counterfeiting operations, this week's decisions reveal how courts are grappling with both tradition and innovation.
This edition comes with a special companion piece (which you will receive as a separate email) written by our friend Harinarayanan, offering additional perspectives on a recent judgment of the Madras High Court.
Let's dive in! 🤿
1. 🍷 Chile v. Peru - Whose wine is it anyway?
By Sriram Venkatavaradan
The Delhi High Court was confronted with an interesting issue pertaining to the exclusive rights over production of a popular South American wine -- PISCO, in a case that reads like a centuries-old custody battle over liquid heritage.
The court recognised the dual origin of PISCO, acknowledging that both Chile and Peru have a long-standing history with the spirit. Historical records, including Chile's 1733 Coquimbo inventory, proved an independent legacy that couldn't be dismissed.
The court's balanced approach - Registration of Peruvian PISCO under the GI Act does not bar the recognition of Chilean PISCO as a homonymous GI under Section 10, provided customers are not misled.
Qualitative distinctions matter - The court found that Peruvian and Chilean PISCO differ in production methods and taste profiles, making them "qualitatively distinct" products.
GI law differs from trademark law - Concepts like 'dishonest adoption' and 'prior use' that dominate trademark disputes have no application in GI law.
The sweet precedent - The court drew parallels to Bengal and Odisha's coexistence over Rasogolla, suggesting peaceful coexistence is possible in GI disputes.
📌 Why it matters:
This ruling establishes that geographical indications can transcend modern political boundaries and recognize shared cultural heritage. For practitioners, it clarifies that GI law operates on fundamentally different principles than trademark law, focusing on geographical and qualitative factors rather than priority or exclusivity. The decision opens the door for other cross-border products to seek protection without fear of automatic rejection based on existing registrations.🔎 Between the Lines:
The court essentially told Peru and Chile to stop whining about wine! What's fascinating here is how the judgment navigates the delicate balance between respecting established GI rights while acknowledging that geography doesn't always respect modern borders. By allowing both countries to claim PISCO, the court has created a framework for resolving similar disputes—think Basmati rice (India/Pakistan) or Feta cheese (Greece/Bulgaria). It's a toast to common sense over territorial absolutism!
2. 🥃 Old Monk v. Old Mist: The Rum War foams over court
By Sriram Venkatavaradan
The Himachal Pradesh High Court had to decide whether Eston Roman Brewery's new entrant "Old Mist Coffee Rum" was just another spirited brew—or a deliberate attempt to sneak into Mohan Meaking's iconic Old Monk Coffee riding high on decades of legacy and consumer loyalty.
Registered rights triumph - Mohan Meaking's "Old Monk Coffee" has been a registered trademark since 09.06.2022, valid till 2031, while Eston Roman Brewery had no registration for "Old Mist Coffee Rum".
Visual Deja-Vu strikes - Labels and bottles of "Old Mist" looked suspiciously similar to "Old Monk," triggering prima facie concerns of passing off and infringement.
Classic infringement test applied - The court found similar marks, similar goods, and likelihood of confusion—with Mohan Meaking holding the registered mark, strong goodwill, and global reputation.
📌 Why it matters:
This case reinforces that even minor variations in well-known marks won't escape judicial scrutiny when the overall impression creates confusion. For brand owners, it demonstrates the value of trademark registration in defending against look-alike products. The ruling also shows courts will protect legacy brands from newcomers attempting to ride on established goodwill, particularly in the alcoholic beverages sector where brand loyalty runs deep.
3. 👟 Stepping Into Action: Delhi HC Grants Comprehensive Relief to Birkenstock
By Karthikeyen S.
The Delhi High Court has delivered a decisive blow to counterfeiters targeting German footwear giant Birkenstock, granting sweeping ex-parte interim relief and deploying a veritable army of Local Commissioners to stomp out trademark infringement across Delhi and Agra.
Birkenstock IP GmbH approached the court after discovering an extensive counterfeiting operation spanning from manufacturing units in rural Agra to retail outlets in Delhi's bustling markets. The counterfeiters had replicated not just the trademarks but also the distinctive blue packaging synonymous with the brand.
Justice Saurabh Banerjee's comprehensive order issued a blanket injunction restraining defendants from any dealings in products bearing Birkenstock's intellectual property.
Tactical deployment of ten Local Commissioners - Each assigned specific premises with fees ranging from ₹1.5 to ₹2 lakh, with authority to break open locked premises in police presence.
International counterfeiting network exposed - Investigation traced the supply chain from Agra manufacturing to Delhi retail markets and even export operations.
Procedural innovation - The Court ordered masking of all party names until Local Commissioners submit reports, preventing evidence tampering.
📌 Why it matters:
This ruling demonstrates the Delhi High Court's willingness to deploy sophisticated enforcement strategies against organized counterfeiting operations. The appointment of multiple Local Commissioners for simultaneous raids prevents counterfeiters from simply shuffling inventory between locations. For brand owners, this judgment provides a blueprint for comprehensive anti-counterfeiting campaigns that address entire supply chains rather than isolated incidents.
👀 Between the Lines:
Birkenstock has quite literally put its foot down! The appointment of ten Local Commissioners is essentially creating a specialized IP enforcement task force. This coordinated approach recognizes how modern counterfeiting has evolved from small-scale operations to sophisticated international supply chains. The masking of party names is particularly clever—it's like keeping the details of a police investigation under wraps until arrests are made. For counterfeiters, the message is clear: the courts are getting as sophisticated as the crimes.
4. 🚗 Parking Lot Politics: Delhi HC Schools Patent Controller on Obviousness
By Karthikeyen S.
The Delhi High Court has delivered a master class in patent law, setting aside a Controller's rejection of a "Vertical Rotary Parking System" patent application and remanding the matter for fresh consideration.
Dong Yang PC, Inc. found itself in the peculiar position of having its 2013 patent application rejected because the Controller deemed it merely a "workshop modification" of the company's own earlier 2003 patent. The new system addressed noise and friction issues by reversing male and female coupling elements—a change the Controller dismissed as obvious.
Procedural fairness violation - Document D-5 was introduced days before the hearing without being part of the original examination report, yet the Controller refused to allow amendments.
Flawed obviousness analysis - Despite acknowledging novelty, the Controller provided no adequate reasoning for why the modification was obvious to a skilled person.
The ten-year gap speaks volumes - Justice Pushkarna emphasized that if the improvement was so obvious, others would have made it during the decade between patents.
Key principles reinforced - Simplicity doesn't defeat patentability, obviousness must be strictly and objectively judged, and unsupported assertions of "common general knowledge" are insufficient.
📌 Why it matters:
This judgment clarifies that patent offices cannot reject applications based on hindsight bias or unsupported claims of obviousness. For inventors, it confirms that even simple improvements can merit patent protection if they solve real problems. The decision also emphasizes procedural fairness—applicants must be given proper opportunity to respond to new prior art citations, regardless of the source.🔎 Between the Lines:
The Controller's approach was like rejecting a luxury car patent because it's still "just four wheels and an engine"! The ten-year gap is the smoking gun—if swapping coupling elements was such an obvious fix, why did it take a decade for even the original inventor to think of it? This case perfectly illustrates how patent examination can go into reverse gear when examiners confuse simplicity with obviousness. The judgment reminds us that hindsight is 20/20, but patent law requires assessing obviousness through the lens of what was known at the time.
5. ⚖️ Plaint Dismissed: Court Rejects Coromandel's PADAN Trademark Suit
By Saai Sudharsan Sathiyamoorthy
In a significant ruling on corporate identity and trademark licensing, the Delhi High Court dismissed Coromandel Indag Products' suit against Sumitomo Chemical, finding that the plaintiff lacked standing to claim rights over the PADAN trademark.
The court found that Coromandel Indag Products attempted to represent its group company CAPL (Coromandel Agrico Private Limited), which held the actual license to use PADAN. Justice Amit Bansal ruled that corporate entities are separate legal persons and cannot espouse each other's causes in litigation.
The license was granted to CAPL, not the plaintiff - Distribution Agreement dated 26th December 2005 clearly showed CAPL as the licensee, not Coromandel Indag Products.
CAPL under insolvency proceedings - With CAPL in CIRP, only the Resolution Professional could bring such an action, not the parent company.
Non-exclusive license ≠ ownership - Even CAPL couldn't claim proprietary rights as it was merely a non-exclusive licensee while Sumitomo remained the registered proprietor.
Use by licensee benefits licensor - Settled law establishes that a licensee's use inures to the benefit of the trademark owner, not the licensee.
📌 Why it matters:
This ruling reinforces fundamental corporate law principles—each company is a separate legal entity and cannot sue on behalf of its subsidiaries or group companies. For trademark practitioners, it clarifies that non-exclusive licensees cannot claim ownership rights regardless of duration of use. The decision also highlights the importance of proper documentation and party identification in IP litigation
6.📱 Audio Standards Showdown: Delhi HC Orders ₹20 Crore Security Deposit in Dolby vs. Lava SEP Battle
By Saai Sudharsan Sathiyamoorthy
The Delhi High Court delivered a landmark ruling in favor of audio technology giant Dolby International AB, ordering Lava International Limited to deposit ₹20,08,06,293.92 as pro tem security against potential damages in a Standard Essential Patents (SEP) infringement dispute over Advanced Audio Coding (AAC) technology.
The conflict traces back to December 2018, when Dolby initiated Fair, Reasonable, and Non-Discriminatory (FRAND) licensing negotiations. However, after six years of talks, Dolby characterized Lava's approach as dilatory tactics constituting "patent holdout."
For SEP Holders: This ruling provides crucial leverage against patent holdout strategies. Courts will now look unfavorably on implementers using dilatory tactics and won't hesitate to order substantial early-stage security deposits. The decision strengthens SEP holders' ability to bring unwilling licensees to meaningful negotiations.
For Technology Implementers: Clear warning about good faith negotiation obligations. Simply delaying discussions or raising validity challenges only after litigation is high-risk strategy likely to trigger significant financial penalties. Proactive licensing engagement becomes essential risk management.
For FRAND Framework: The judgment reinforces that FRAND is a "two-way street" with reciprocal obligations. It encourages genuine negotiations while providing courts with practical tools to prevent abuse of the licensing process during lengthy litigation.
For Indian Patent Law: Establishes important precedent for pro tem security deposits as distinct remedy from interim injunctions, making early-stage relief more accessible for SEP holders based on conduct and commercial realities rather than deep technical analysis.
🔎 Between the Lines:
This case represents a judicial reality check for companies thinking they can game the SEP licensing system. Lava's strategy of "delay and challenge" backfired spectacularly, resulting in a ₹20+ crore security deposit that could have been avoided through good faith negotiations. For Dolby, it's a validation that courts will protect legitimate SEP rights against holdout behavior, even in India's traditionally implementer-friendly environment.
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