Patent and Trademark Examples: Ericsson vs. Xiaomi

A
Report
On
Patent and Trademark Examples
Submitted To: Prof. Isha Dave

Submitted By:
Dhruv Gajjar (GLS1508)
Jai Barbhaya (GLS1564)
Khushbu Jain (GLS1515)
Yash Sharma (GLS1552)
Himanshu Sikarwar(GLS1557)
Darshan Lodhia (GLS1521)
Ranjeet Siju (GLS1556)
Batch: 2015-17
GLS Institute of Computer Technology (GLSICT- MBA)
PATENT 1
Ericsson vs. Xiaomi
In December 2014, Ericsson had filled a suit against

Xiaomi in India for the alleged infringement of the 8
standard essential patents. The Delhi High Court
granted an ex-parte injunction on the sale,
manufacture, advertisement and import of Xiaomis
devices.
Xiaomis claimed that its latest devices in the Indian

market (as of December 2014), the Mi3, Redmi15 and
Redmi Note 4G, contained Qualcomm chipsets, which
implemented technologies licensed by Ericsson. Xiaomi
subsequently challenged the injunction before a
Division Bench of the Delhi High court, which issued
temporary orders to allow Xiaomi to resume the sale,
import, manufacture, and advertisement of its mobile
devices subject to the following conditions:
Xiaomi would only sell devices having Qualcomm chips.
Xiaomi would deposit Rs. 100 towards royalty for every
device it imported to India from the date of the launch
of the device in India to January 5, 2015. This amount
was to be kept in a fixed deposit for three months
during the preceding of the case.
PATENT 2
Novartis vs. Cipla

In another patent litigation case, Delhi High court
barred Indian generic drug maker Cipla from making or
selling generic copy of Novartis Onbrez by giving
temporary injunction to Novartis. Citing famous Roche

vs. Cipla case, the court observed that Novartis has a
strong prima facia case and as the validity of the patent
is not seriously questioned, there is a clear way out to
grant injunction. Further, the court observed that Cipla
did not provide any figures about the inadequacy or
shortfall in the supply of the drug Earlier Cipla
launched its generic version of Indacarterol in
Octomber claiming urgent unmet need for the drug in
india.
Without doing conventional way, Cipla, also approached
the Department of industrial policy and promotion
(DIPP) to exercise its statutory powers under section 66
and section 92 (3) to revoke Indian patents IN222346,
IN230049, IN210047, IN230312, IN214320 granted to
Novartis AG For the drug Indacaterol. Cipla argued on
the bases of 3 main points. i.e. epidemic or a public
health crises of COPD, unable to manufacture the same
in India by patentee and high cost of patented drug.
Trademark
Cadbury loses rights in ECLAIRS marks
In an order dated October 31 2013, the Intellectual

Property Appellate Board (IPAB) has ordered the
removal of Cadburys ECLAIRS marks from the
Trademarks Register on the ground of non-use. The
petition for removal of the mark had been filed by ITC
Limited, an Indian company with extensive business
interests in the confectionery sector. Interestingly, the

IPAB issued a common order for removal of four
registrations owned by Cadbury, even though
Cadburys counsel sought to voluntarily cancel the
registrations.
The facts of the case were as follows:-
Applicant ITC claimed that it is one of the leading

companies in India, and that it has been engaged in the
business of marketing and manufacturing consumer
goods since 1910.
The applicant started marketing confectionery

products in 2002 under the brand names Minto-O and
Candyman.
The
applicant
started
marketing
clairs
confectionery in or around August 2003. Since then, the
Applicant has continuously and extensively used the
trademark ECLAIRS in conjunction with its famous
trademark CANDYMAN, which is well recognized among
consumers.
Cadbury filed suit against the applicant and, in

April 2005, the City Civil Court in Ahmadabad issued an
ex parte injunction restraining the applicant from using
the trademark ECLAIRS or any other deceptively similar

trademark.
Aggrieved by the ex parte order, the applicant

appealed the High Court of Gujarat, which modified the
order, thereby allowing the applicant to manufacture
and sell its products as 'Candyman Choco clairs'.
Subsequently, the applicant filed petitions for the

removal of Cadburys trademarks - namely, CADBURY
ECLAIRS, CADBURY CHOCOLATE ECLAIRS, CADBURY
CHOCOLATE ECLAIRS POP and ECLAIRS.
The rectification petitions were based on the following

grounds:-
The marks wrongly remained on the Trademarks

Register;
Marks that are not put to genuine use are liable to

be removed from the register;
The marks at issue were not distinctive of the

registered proprietor's goods; and

The fact that the marks at issue remained on the
register affected its purity.
Cadbury filed counter-statements, mainly contending

as follows:
The rectification petitions had been filed only as a

counterblast to the civil suit filed by Cadbury against
the applicant;
The claim of non-use was not justified, as Cadbury

has been using the trademarks continuously and
extensively without any interruption;
The trademark CADBURY ECLAIRS was adopted by

its predecessors several decades ago and is registered
in various countries;
The onus to prove non-use

discharged by the applicant; and
had
not
been
The word 'clairs' only formed part of the marks

against which the applicant had filed applications for
rectification.
When the matter was heard by the IPAB, Cadbury's

counsel submitted that it was taking steps to withdraw
the registrations and, therefore, it did not argue the
matter on merits. However, counsel for the applicant
submitted that the matter should be heard and decided
on merits, as there was an injunction order against it.
The applicant also submitted that the marks were not
used by Cadbury and that the trademark ECLAIRS is
descriptive as per its dictionary meaning. The applicant
also filed third-party affidavits to prove non-use.
The IPAB held that the only evidence filed by Cadbury

was the registration certificates obtained in various
countries.
However,
there
was
no
evidence
demonstrating use, and registration alone did not help
Cadbury to prove the use of its marks. The IPAB further
held that, as Cadbury had not rebutted the ground of
nonuse, the fact that its marks had been registered for
several years would not suffice. The board thus ordered
the removal of Cadburys marks from the register.

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A

Patent and Trademark Examples

Submitted To: Prof. Isha Dave

GLS Institute of Computer Technology (GLSICT- MBA)

Ericsson vs. Xiaomi

In December 2014, Ericsson had filled a suit against

Xiaomis claimed that its latest devices in the Indian

Novartis vs. Cipla

temporary injunction to Novartis. Citing famous Roche

Cadbury loses rights in ECLAIRS marks

In an order dated October 31 2013, the Intellectual

interests in the confectionery sector. Interestingly, the

The facts of the case were as follows:-

Applicant ITC claimed that it is one of the leading

The applicant started marketing confectionery

Cadbury filed suit against the applicant and, in

the trademark ECLAIRS or any other deceptively similar

Aggrieved by the ex parte order, the applicant

Subsequently, the applicant filed petitions for the

The rectification petitions were based on the following

The marks wrongly remained on the Trademarks

Marks that are not put to genuine use are liable to

The marks at issue were not distinctive of the

Cadbury filed counter-statements, mainly contending

The rectification petitions had been filed only as a

The claim of non-use was not justified, as Cadbury

The trademark CADBURY ECLAIRS was adopted by

The onus to prove non-use

The word 'clairs' only formed part of the marks

When the matter was heard by the IPAB, Cadbury's

The IPAB held that the only evidence filed by Cadbury

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