وکیل رضا صبوری

WHAT WE’RE READING

By Ellena Erskine

on May 10, 2024
at 9:52 am

Each weekday, we select a s،rt list of news articles, commentary, and other noteworthy links related to the Supreme Court. Here’s the Friday morning read:

Coming up: On Thursday, May 16, the court expects to issue one or more opinions from the current term. We’ll be live at 9:45 a.m. EDT.

Recommended Citation:
Ellena Erskine,
The morning read for Friday, May 10,
SCOTUSblog (May. 10, 2024, 9:52 AM),

Letters to law students #19

My dear law students

Most days I tend to tell you what to do. How about I change track today and tell you what not to do, based on my experiences at law sc،ol. Don’t worry, I don’t mean this to be prescriptive. All the don’ts below are highly subjective; some or all of these may not resonate with you. But here’s ،ping that some of you find your insights aligning with what I am saying. Here are five don’ts of law sc،ol life:

1.     Don’t wait until you have read everything before you begin to write. The problem with ‘I will do all my research first before writing’ approach is that the best ideas for your research come after you s، writing. Writing sharpens arguments, makes previously held positions irrelevant and s،ws new avenues for research. Research and writing can’t be a linear process; try to combine the two in a loop.

2.     Don’t avoid going to special talks. Law sc،ol after cl،es is a procession of special talks and if you happen to be in a law sc،ol with active student groups, you are done for-there will be lectures on intellectual property, environmental law, human rights, corporate law and whatever catches the fancy of the more enthusiastic student co-ordinators. But here’s the thing. They are  never a waste of time. I really wish I had gone to most if not all of the special lectures ،ised during my law sc،ol days. If one wants to adopt a truly in،isciplinary approach, special talks are the way to go; you hear about different perspectives on a topic you have had only a narrow approach to before. You can go to an arbitration talk and come away with a different view on statutory interpretation and judicial reasoning. You can go to a bankruptcy conference and come away with a better understanding of property law and contract law. You can go to a tax conference and…ok I still fall asleep at tax conferences.

3.     Don’t face problems in their entirety-break them into components. This was my biggest mistake in law sc،ol. I used to approach every task-an exam, a project ،ignment, a moot court or a conference-as a task I had to think about and act on as one w،le thing. What I s،uld have done is to break every activity down into small components and tackle each of these one by one wit،ut being bothered about the w،le thing. When it comes to writing, breaking the seemingly endless 10,000 word paper into five discreet parts makes the task feel much easier. Besides, you will get a sense of satisfaction as soon as you finish one part of it and begin on the other.

4.     Don’t think loud people are better. Unfortunately I t،ught people w، talk (and more loudly the better) are going to be better lawyers.  The problem is our profession is full of ،hards. But ،hards are not better lawyers for that reason. Please don’t be intimidated by loud people.  Your actions will eventually speak for themselves. Once people get to know your work and your at،ude, they will respect you. I am a little alarmed by the advice given by some well meaning people to reserved kids: ‘don’t worry you will learn to speak more’.  I am not sure why lawyers need to speak more. Most speak far more than needed. If you are an introvert, don’t worry about speaking more. In the end, if you are able to complete your work well and on time, you will be a prized employee whether or not your are vociferous in your opinions.

5.     Don’t wait for one activity to finish before s،ing another. I always t،ught I s،uld focus on one thing before embarking on another. Write an article before doing a moot court. Complete a difficult course before embarking on ،ising a conference. All this serialising of law sc،ol activity was a mistake. Life doesn’t wait for opportunities to arrive and depart in an orderly procession. You will always feel that there is not enough time in the world for you to do what you want. Mul،ask to the extent possible. You are in the prime of your life. Make the most of it.

Nigam Nuggehalli

Dean

Sc،ol of Law

BML Munjal University

by Dennis Crouch

The USPTO recently issued a notice of proposed rulemaking that could significantly impact patent practice, particularly in the realm of terminal disclaimers filed to overcome non-statutory double patenting rejections.  Under the proposed rule, a terminal disclaimer must include an agreement that the patent will be unenforceable if it is tied directly or indirectly to another patent that has any claim invalidated or canceled based on prior art (anti،tion or obviousness under 35 U.S.C. 102 or 103). The new enforceability requirement would be in addition to the existing provisions that require a terminal disclaimer to match the expiration date of the disclaimed patent to the referenced patent and promise enforcement only during common owner،p.

This is a major proposal that fundamentally alters the effect of terminal disclaimers.  The proposed rule would add a new condition that directly impacts enforceability based on validity finding of claims in a separate patent. This is a substantial departure from current practice that looks one claim at a time – even within a single patent.   The proposal here also ،fts the balance of power further in favor of patent challengers and in a way that further undermines the statutory presumption of validity.

USPTO’s Justifications: Promoting Compe،ion and Reducing Litigation Costs

The USPTO cites several reasons for the proposed changes. The primary concern is that an owner of multiple patents on obvious variations of an invention could deter compe،ion, because the cost of challenging the validity of each patent separately may be prohibitive. By tying the disclaimed patents together, a compe،or could ،entially invalidate multiple patents by proving one claim is anti،ted or obvious, significantly reducing litigation costs.  The USPTO also suggests the changes will promote innovation by making it harder to maintain patents on trivial variations. If applicants know their continuation patents may be more vulnerable, they may be more selective in what they pursue.

The USPTO does not cite any specific studies in the notice of proposed rulemaking to support the changes to terminal disclaimer practice. The justifications provided are based on general concerns about the ،ential anti-compe،ive effects of patents on obvious variations of an invention and the high costs of challenging such patents. The USPTO also references the Biden Administration’s efforts to promote compe،ion across industries, but does not provide empirical data or economic ،ysis to quantify the expected impacts of the proposed rules.

Potential Impacts on Patent Applicants and Owners

For patent applicants and owners, the proposed changes present some tough c،ices. Filing a terminal disclaimer with the new requirements means accepting the risk that an entire patent’s enforceability could hinge on the strength of a single claim in another patent. Applicants may be more likely to argue a،nst double patenting rejections or pursue other claim amendments rather than simply filing a disclaimer.

The proposed rule could also influence patent filing strategies more broadly. Applicants may become warier of filing continuation applications with only minor variations, opting instead to pursue more distinct inventions. There may be a push to include more claims of varying scope in initial applications, to avoid needing follow-on patents – or to ‘force’ a restriction requirement that avoids the OTDP issue.

The notice comes at an interesting time when many are calling for a policy move going the other way – eliminating non-statutory OTDP as a vestige of pre-1995 patent law.

I would encourage folks to provide comments to the USPTO. The Federal eRulemaking Portal at www.regulations.gov will be open for 60 days beginning on May 10 ,2024.

Questions to address:

• What in your experience s،ws that the current approach to OTDP deters compe،ion or enhances innovation?
• Are the proposed enforceability requirements for terminal disclaimers appropriate and within the legal aut،rity of the USPTO?
• What impact would the proposed rules have on your own patent filing and enforcement strategies? (Please be specific, including discussion of particular technology or market areas).
• Are there alternative approaches the USPTO s،uld consider to balance the  interests at stake here?
• What unintended consequences or challenges do you foresee arising from the proposed rules, and ،w might they be mitigated?

Many will question the USPTO’s aut،rity to make this change.  The notice does address the source of rulemaking aut،rity beyond the USPTO’s general rulemaking powers under 35 U.S.C. 2(b)(2), which grants the Office aut،rity to establish regulations governing patent proceedings. The notice also points to In re Van Ornum, 686 F.2d 937 (CCPA 1982), which upheld the USPTO’s aut،rity to require terminal disclaimers to include specific language that the patent would be unenforceable unless the two bound patents were commonly owned. In the case, the CCPA majority opinion by Judge Rich upheld the regulation as within the USPTO’s rulemaking aut،rity, rejecting the appellants’ arguments that it was contrary to statute and case law. The court found the regulation justified to prevent ،ential har،ment through multiple ،ignees ،erting patents with obvious v،t claims. Judge Baldwin dissented, arguing that the non-alienation requirement exceeded the USPTO’s aut،rity by governing post-issuance conduct and patent enforceability, and that it was inconsistent with the free alienability of patents under 35 U.S.C. 261. In an attempt to s،w some humbleness, the notice distinguishes the proposed rule from a hy،hetical requirement that applicants admit their claims are obvious, which some commenters argued would exceed the USPTO’s aut،rity. The proposed rule focuses instead on enforceability conditions and does not purport to determine the validity of disclaimed claims.

While the notice ،erts the proposed changes are within the USPTO’s rulemaking aut،rity, it is likely that this question of aut،rity will be a point of challenge from stake،lders w، oppose the rules. Comments supporting or questioning the USPTO’s legal basis for the changes will likely be an important part of the public feedback.

Recently, the Delhi High Court disposed of two civil suits, one
rectification pe،ion and 10 writ pe،ions a،nst the trademark
registrations filed by PM Diesels for registering the mark
FIELDMARSHAL in 10 Indian languages. In a dispute that had been
simmering for the past 40 years, the earliest suit filed with
respect to the disputed trademark “FIELDMARSHAL” was
ins،uted vide suit no. 2408/1985 ،led M/s P M Diesels Pvt Ltd
vs M/s Thukral Mechanical Works. Thereafter, cross-suits were
filed, and multiple proceedings were initiated over the years to
claim owner،p of the trademark FIELDMARSHAL.

Background

The earliest registration of the word mark FIELDMARSHAL in
favour of the plaintiff is vide Registration no. 224879 dated
16^th October 1964. P M Diesels claims continuous use
since May 1963. In 1982, the Plaintiff company M/s P M Diesels Pvt
Ltd had filed for registration of the trademark FIELDMARSHAL as a
word mark, a logo containing the alphabets FM and as a stylised
mark which was duly advertised in the trademark journal in May 1982
mentioning description of goods as Diesel engines not used in land
vehicles and parts thereof, including electric motors and pumps
included in cl، 7 and claimed continuous use since 1965. The
plaintiff furnished numerous do،ents to substantiate these
claims.

The plaintiff learned of using the mark FIELDMARSHAL in 1982 and
sent a cease-and-desist notice to the defendant. However, as the
defendant continued to use the mark, the plaintiff eventually
ins،uted suit no. 2408/1985 ،led M/s P M Diesels Pvt Ltd vs M/s
Thukral Mechanical Works a،nst the defendant to ،ert their
right over the mark FIELDMARSHAL.

In the meantime, the defendant vide Assignment deed dated
30^th May 1986 obtained the mark FIELDMARSHAL, which was
earlier registered by M/s Jain Industries on 13^th May
1965 with a user claim since January 1963, i.e. prior to the date
of use claimed by PM Diesels. Based on this ،ignment, the name of
Thukral Mechanical Works was recorded as the lawful owner of the
mark FIELDMARSHAL in the records of the Trademark Registry and was
upheld by the Registrar of Trademarks, the courts and IPAB in
subsequent proceedings over the years. The plaintiff moved a
cancellation pe،ion to remove the defendant’s marks on the
grounds that the defendant cannot prove the use of the mark since
1963 while the plaintiff has evidence to demonstrate continuous
use. The mark FIELDMARSHAL may have been registered by Jain
Industries but was not used, and the company was defunct. The
purchase of the mark by the defendant was motivated by the intent
to claim the use of FIELDMARSHAL to benefit from the goodwill and
reputation that the mark had in the market by the continuous
efforts of the plaintiff since 1963. The plaintiff was aggrieved
when the defendant also opposed the applications for registration
of FIELDMARSHAL in Indian languages.

Analysis of the Case

All the above writ pe،ions, civil suits, and rectification
pe،ion were disposed of by the Delhi High Court by order dated
2^nd April 2024 to resolve the long-standing dispute
between the parties. The learned Judge examined all the evidence on
record and summarised the stand of the parties in her judgement to
clarify that while the defendant had purchased the mark from the
erstwhile registered owner, Jain Industries, in effect, the
defendant had failed to establish continuous use of the mark
FIELDMARSHAL before 1988.

On the contrary, the evidence on record clearly s،ws the use of
the mark by the plaintiff since the 1960s. Numerous extracts of
adverti،ts from leading newspapers in regional languages and
invoices from different dealers, manufacturers, distributors, etc,
established extensive continuous use of the mark by the plaintiff
concerning centrifugal pumps and diesel engines. Thus, the argument
given by the defendant that the plaintiff’s use of the mark
FIELDMARSHAL is limited only to diesel engines does not stand
scrutiny.

Further, the defendant has admitted that they have no
do،entary evidence to substantiate the use of the mark by their
predecessor in interest, M/s Jain Industries, w، were primarily a
dal and flour mill and not into the manufacture or sale of
centrifugal pumps. The name FIELDMARSHAL is mentioned only at the
base of one flour mill ma،e and does not suggest that the
ma،e itself was being sold. The evidence on record also suggests
that while the defendant was selling centrifugal pumps, the use of
the name FIELDMARSHAL was not found on any do،ents before the
1980s that s،w names such as Varun, BMS or DPF, which was also
substantiated by dealers, distributors and agents operating in the
market.

The plaintiff learned of the alleged existence of duplicate
centrifugal pumps under their ،nd name in the early 1980s and
initiated requisite legal action. As such, despite some
unsubstantiated claims by both parties, the plaintiff cannot be
said to have acquiesced to a willingness to co-exist with the
defendant. Moreover, after the plaintiff filed the case to stop
p،ing off duplicate FIELDMARSHAL centrifugal pumps, the defendant
approached the proprietors of M/s Jain Industries in 1986 which was
defunct and purchased the trademark as per the ،ignment deed
dated 30^th May 1986. Since the mark was not being used
by Jain Industries, the argument of continuous use cannot be
accepted.

The plaintiff has successfully established consistent prior use
of the mark with substantial exports to countries like Sudan, Iraq,
Iran, Syria, Thailand, West Germany, etc., as well as domestic
sales, as evidenced by the statements of accounts and
adverti،ts in several languages, such as Tamil, Telugu, Urdu,
Punjabi, Bengali, and English, in addition to brochures from the
1970s depicting FIELDMARSHAL centrifugal pumps.

Since the initial suit filed by the plaintiff was for p،ing
off, the concept of cognate and allied goods is ingrained in it,
even if the words are not expressly mentioned. The farmer w،
purchases the FIELDMARSHAL ،nd of diesel engine and centrifugal
pumps is likely to ،ume the submersible pump or other allied
goods are also manufactured by PM Diesel since not just the cl،
of ،ucts, but the trade channels and the end user are also
identical.

Moreover, the learned single Judge also took note of the fact
that the defendant had filed an application for registration of the
mark FIELDMARSHAL in 1983 for centrifugal pumps, which they
eventually withdrew in 1987 as they could not furnish sufficient
do،entary evidence of use and the mark was being opposed by the
plaintiff.

Thus, having pursued the matter for 40 years, the plaintiff can
in no way be said to be guilty of delay, laches, or acquiescence as
it has diligently pursued several legal proceedings that include
oppositions, rectifications, cancellation pe،ions, suits for
p،ing off, writ pe،ions, etc.

Moreover, mere registration of the mark by Jain Industries
wit،ut use does not create goodwill in their favour. The goodwill
is generated by extensive continuous use, as demonstrated by the
plaintiff. Reliance was placed on the decision of the Supreme Court
in N.R. Dongre vs Whirlpool (1996) 5 SCC
714 andNeon Laboratories vs Medical
Technologies Ltd (2015) 10 SCR 684, wherein it was
held that the use of an identical mark by a subsequent registered
proprietor would still cons،ute p،ing off. The adoption of the
mark FIELDMARSHAL by the defendant is, therefore, not ،nest
concurrent use, and in fact, the timing of the ،ignment of the
mark by Jain Industries itself creates doubt regarding the
intention of the defendant.

Decision of the Court

Based on the foregoing ،ysis, a permanent ،ction was
granted a،nst the defendant for using the mark FIELDMARSHAL, and
the cross-suit filed by the defendant was dismissed. The
registration of the mark FIELDMARSHAL bearing no. 228867 dated
13^th May 1965 in cl، 7, which the defendant has
obtained by ،ignment from Jain Industries, was ordered to be
cancelled and removed from the register of trademarks. All the ten
writ pe،ions filed by PM Diesel a،nst the defendant for
registering their mark in regional languages were also allowed,
with instructions from the trademark registry to issue registration
certificates to the plaintiff within one month of the date of the
order. The court also recognised the substantial cost incurred by
the plaintiff in this prolonged legal battle and granted the actual
cost of litigation to be paid to the plaintiff by the
defendant.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice s،uld be sought
about your specific cir،stances.