Showing posts with label delhi high court. Show all posts
Showing posts with label delhi high court. Show all posts

Tuesday, June 20, 2017

Permitted User Cannot Institute a Suit for Trademark Infringement, Suit Dismissed by Delhi High Court

The plaintiff/respondent no. 1, Exxon Mobile Corporation, is the registered proprietor of the trademark Exxon and does not have an office in India. Plaintiff no. 2, which is a wholly owned subsidiary of Plaintiff no. 1, has an office in Delhi. And is a permitted user of the mark.
A permitted user of the mark is a person who is connected with the goods or services to which the mark relates in the course of trade and is authorized in writing to use the mark.
The defendant is the registered proprietor of the trademark ‘Exon Engineering Corporation’ and has an office in Kolkata.
Relying on Section 134(2) of the Trademarks Act, 1999 (“the Act”), the plaintiff filed the suit in Delhi on the ground that plaintiff no. 2 has an office in Delhi. Since Section 134(2) of the Act empowers a plaintiff to institute a suit for trademark infringement at any place where its office is located, the plaintiffs contended that the Delhi High Court was vested with the jurisdiction to adjudicate upon the matter.
Before the single judge, the Arguments of the plaintiffs were twofold.
First, arguing that Section 52 of the Act empowers a registered user of a mark to institute a suit for infringement, the plaintiffs contended that there was no reason why a permitted user of the mark would not be similarly empowered to institute such a suit.
Second, relying on Section 48(2) of the Act, they contended that the use of a mark by a permitted user would be deemed to be use by the registered proprietor. This being the case, owing to the fact that the permitted user of the mark i.e. plaintiff no. 2 had an office in Delhi, its use of the mark would be deemed to be use of the mark by the first plaintiff in Delhi.
On the other hand, the defendant argued that it was carrying on business in Kolkata, so a court in Delhi would not have jurisdiction to adjudicate upon the matter. Further, in light of the fact that Section 53 of the Act imposes an express embargo on the institution of a suit by a permitted user, plaintiff no. 2 could not have instituted the suit. Finally, since plaintiff no. 1 did not have an office in Delhi, Section 134(2) could not come to its aid.
Ruling in favour of the plaintiffs, the single judge held that the explanation to Section 134(2) of the Act, which delineates the categories of persons who are empowered to institute a suit, must be construed in an inclusive and liberal fashion. This being the case, a permitted user would also fall within the four squares of the term ‘person’ and would, therefore, be empowered to press Section 134(2) into service.
Relying on the apex court’s holding in the case of Exphar SA versus Eupharma Labratories, which involved the interpretation of Section 62(2) of the Copyright Act, the single judge held that, in light of the fact that the person instituting the suit i.e. plaintiff no. 2 had an office in Delhi, the suit could go forward.
Finally, the single judge also accepted the plaintiff’s contention that plaintiff no. 1 would be deemed to use the mark in Delhi owing to its use by its wholly owned subsidiary.
The defendant-Appellant appealed before the Division Bench against this judgment, resulting in the judgment under consideration.
Decision of Court:
The Court commenced its analysis by noting that the single judge’s reliance on the Exphar case was inapposite in light of the fact that there is a critical difference in the principles governing the construction of the term ‘person instituting a suit’ in the Copyright Act and Trademark Act.
More specifically, the terms ‘permitted user’, ‘registered user’, and ‘proprietor of the registered trademark’ are unique to the Trademark Act and are significantly different from and cannot be treated as being on the same footing as an exclusive licensee under the Copyright Act.
Thereafter, on a perusal of the text of Section 53, the Court held that the Section clearly prohibits a permitted user from instituting a suit for infringement.
Noting the difference between a registered user and a permitted user, the Court held that Section 52(1) authorizes a registered user to institute a suit whereas there is no such enabling provision insofar as a permitted user is concerned.
Holding that the term ‘person’ in the explanation to Section 134(2) must be construed as being inclusive, the Court held that it would nonetheless not include a permitted user within its ambit. The opposite conclusion would clearly be contrary to the terms of the enactment, inasmuch as it would authorize the selfsame thing that Section 53 prohibits.
Since plaintiff no. 2 was not legally empowered to institute the suit, the Court next had to decide if it had jurisdiction to adjudicate upon a suit instituted by plaintiff no. 1.
In order to answer this question, the Court relied on its own judgment in the case of Ultra Home Construction versus Purushottam Kumar Chaubey as per which a court has the jurisdiction to adjudicate upon a matter under the special provisions found in Section 134 of the Act and Section 62 of the Copyright Act in 4 different circumstances. Ritvik has covered the ratio of this case here.
Since the plaintiff does not have a principal place of business in India and the cause of action did not arise in Delhi, the Court held that the factual matrix of this case would not fall within the ambit of any of the four circumstances set forth in Ultrahome.
On this basis, the Court reversed the single judge’s decision and rejected the plaint for lack of jurisdiction.

Tuesday, February 21, 2017

Marriage under Hindu law is ‘sacrament’, not contract: Delhi High Court

Marriage under the Hindu law is “sacrament” and “not a contract” which can be entered into by executing a deed, Delhi High Court has observed while dismissing a plea by a woman who had challenged an order refusing to declare her as the legally-wedded wife. The woman had approached the court seeking her appointment for job on compassionate ground after the death of her alleged husband, a former sanitation staff in a city government hospital, and a direction to the medical superintendent to release consequential benefits and allow her to join duties.

The high court noted in its judgement that the petitioner had contended that she had married the man by way of execution of a marriage deed in June 1990 without disputing the fact that he was living with his earlier wife, who had died in May 1994. “Since inception, the contention of the appellant (woman) had been that her marriage with the man on June 2, 1990 was performed by way of execution of a marriage deed and an affidavit. It is not disputed by her that the man had a living spouse on June 2, 1990 and she expired on May 11, 1994.

“Under Hindu Law, marriage is a ‘sacrament’ (solemn pledge) and not a contract which can be entered into by execution of a marriage deed. On June 2, 1990 the man was having a living spouse,” Justice Pratibha Rani said. The high court said the lower court had rightly held that the woman cannot claim the status of a legally wedded wife of the man on the strength of the alleged marriage and its order cannot be termed illegal. The woman had claimed she was the man’s widow and after his death, she had applied for appointment on compassionate ground after which she was offered appointment as ‘safai karamchari’ on temporary basis in the hospital.

Later, a show cause notice was served on her asking her to explain the legality and validity of her marriage with the man. She had replied that on the date of death of her husband in February 1997, she was his only wife. The woman’s plea before the trial court was contested by the Delhi government and medial superintendent of the hospital who said that she had misrepresented about being the legally wedded wife of the man. The court, in its verdict, noted that the trial court in its judgement had referred to the earlier order passed by the high court in which it was held that issuance of succession certificate in favour of the petitioner without impleading the legal heirs of the man was of hardly any value.

“It is settled legal position that in second appeal, high court cannot set aside concurrent finding of fact given by the courts below. The second appeal can be entertained only if a substantial question of law is raised. The rationale behind is that appreciation and reappreciation of an evidence must come to an end with the first appeal,” the court noted. “It has been consistent view that high court has no jurisdiction to entertain second appeal merely on the plea that another view is possible on appreciation of relevant evidence available on record,” it said.


http://indianexpress.com/article/india/marriage-under-hindu-law-is-sacrament-not-contract-delhi-high-court-4496819/


Friday, December 23, 2016

Supreme Court stays Delhi HC order on Unitech-home buyers meetings

The Supreme Court on Thursday stayed the Delhi high court order, which had directed realty firm Unitech to hold meetings with home buyers and opening escrow accounts for completion of delayed projects.

A bench of justices, Dipak Misra and Amitava Roy, said the execution proceedings in the cases filed by the home buyers before the NCDRC, which were stayed after the Delhi HC order, will now continue.

The high court had on September 2 granted an opportunity to beleaguered real estate firm to complete its delayed housing projects and hand over possession of flats to the buyers by opening escrow accounts and using the money deposited in it solely for these projects.

The apex court, on November 18, had stayed all the meetings of homebuyers of Unitech Ltd for giving their approval or disapproval to a proposed compromise scheme forwarded by the company to enable it to complete pending projects.

The bench had also issued notice to the company, saying “there is suspicion that it is trying to subvert the order of this court”.

It said that people who were successful at the level of the national consumer commission and are before the apex court, should get their money back from the developer.

The Delhi HC had directed the home buyers across the country to hold meetings for approval or disapproval of proposed scheme of compromise so the company can complete pending projects and hand over the flats.

Justice Sudershan Kumar Misra, who retired on September 6, in his order, said four meetings of home buyers should be held on November 20 in Mohali, Punjab, on November 27 in Chennai, on December 4 in Gurgaon and on December 11 in Noida.

The company had told the high court that it would open escrow accounts in which the amounts received from the buyers and sale of lands would be deposited, and the money would be used solely for completing the delayed housing projects.

The court had put in “abeyance” all the proceedings pending before different forums against Unitech Ltd to enable it to fulfil its commitment towards homebuyers by handing over possession of flats. It also appointed a court commissioner to monitor the functioning of the escrow account.

It had clarified that cases in which directions had been issued or might be issued in future by the apex court to the company in this regard should stand exempted from the scope of the order.

http://www.hindustantimes.com/india-news/supreme-court-stays-delhi-hc-order-on-unitech-home-buyers-meetings/story-dupH3ecApVD7SE1hS928rJ.html



Thursday, December 8, 2016

Seven Towns V. Kiddland: Delhi High Court On Trade Dress Protection

The concept of trade dress, although closely associated with trademarks is not explicitly recognized in Indian legislations unlike its U.S.A. counterpart. In Indian context, upon looking closely at the definitions of "mark" and "package" under S. 2 of the Trade Marks Act, 1999 we see that the trade dresses are also protected.
To define it, trade dress is the visual or sensual experience of a product and is inclusive of the packing, shape and combination of colours used in packaging, such that it distinguished the product from the ones of its competitors. So anything from the wrapping of Cadbury chocolates to the design of flagship stores of Apple Inc. would fall within the ambit of trade dress now.
A landmark case discussing the concept is the case of Walmart Stores v. Samara Brothers[1] where trade dress was defined as "a category that originally included only the packaging, or 'dressing,' of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product."
However, the case of Vision Sports Inc. v. Melville Corp.[2] draws a distinction as to the protection of trade dress and trademark protection wherein it was held that – In contrast, trade dress involves the total image of a product and may include features such as size, shape, colour combinations, texture, or graphics. Trade dress protection is broader in scope than trademark protection, both because it protects aspects of packaging and product design that cannot be registered for trademark protection and because evaluation of trade dress infringement claims require the court to focus on the plaintiff's entire selling image, rather than the narrower single facet of trademark. This was also reiterated in the case of Colgate Palmolive v. Anchor Health[3].
In the recent case, Seven Towns v. Kiddland[4], the concept of trade dress is discussed in detail along with comments on the previous case laws discussing the same subject matter. The dispute is with regard to infringement of trade dress of the Rubik's cube by the product of the defendant called Rancho's cube, in terms of not only the product in itself but also the packaging and labelling.
Brief Facts of the case:
The plaintiff in this case, Seven Towns and Funskool are the original manufacturers and distributors of the product called "Rubik's cube" which has been sold since 1975, all across the globe. The inventor of the cube, Mr. Rubik had the invention of the toy patented, in addition to the product being trademarked after his own name, after an amendment to the original name of "Magic Cube". The plaintiffs allege that the defendants have used a deceptively similar trade dress to that of their product in order to confuse the consumers and take undue advantage of their goodwill. Hence Plaintiff filed suit for permanent injunction, restraining infringement of copyright, passing off, dilution, and various other reliefs against the defendants along with the application for seeking various interim reliefs against the defendants.
Arguments of the Petitioner:
In order to prove that the defendants have used a deceptively similar trade dress to that of Plaintiff's  product in order to confuse the consumers and take undue advantage of their goodwill, plaintiffs in the form of a table shown the similarities in the packaging of their product with that of the defendant like – copying of the diagonal shape of packaging which gives an impression of a 3D triangle bulging out, the usage of 6 primary colors to denote the product's name, its font and a label that denotes the appropriate age for the product being placed at the lower left hand of the label to name a few. The Plaintiffs did not claim rights over the cube per se, but the expression of the cube i.e. a cube comprised of 36 smaller cubes, 3X3X3 cube with black as its base and green, red, blue, yellow, white and orange being the different colors on each surface of the cube. The petitioners also rely on the fact that they have obtained considerable goodwill and reputation in the market as manufacturers of the cube and how they have been vigilantly acting against any company that infringes their product, in addition to the worldwide recognition and reputation wherein the toy in itself is referred to "Rubik's cube". This petition is thus presented before the High Court against the defendants for the tort of passing off and infringement of trade dress, which has resulted in considerable loss to the plaintiff. The plaintiff further relied on the case law of Ideal Toy Corporation v. Plawner Toy Mfg. Corp.[5] where the U.S. Court of appeals relied on acquired distinctiveness and trade dress serving the purpose of identification of source, apart from determining the trade dress of the plaintiffs and how it was considerably reputed and recognized. Further reliance is also placed on the case law of Heinz Italia v. Dabur India Ltd.[6] which states that an injunction must follow where it prima facie appears that the adoption of the mark in itself was dishonest, thus praying for the interim relief of an injunction against the defendants.
Arguments of the Defendants:
The defendants denied that the trade dress of the plaintiff is distinctive or well recognized and hence, the same cannot acquire goodwill or be reputed. They also claim that the product is not of superior quality and that they have substantially invested in the advertising of their product. A dissimilarity table is produced on behalf of the defendants and reliance is placed on the sale of units, the difference in price to show that the plaintiffs wish to eliminate the serious competition that they fact from the defendants. The defendants also mention the difference in name, in the place of manufacture as points of distinction in addition to stating that the trade dress of the plaintiff fails to be a well known mark as specified under s. 11(6) and s. 2(zg) of the Trade Marks Act, 1999 as the plaintiffs have failed to provide any documentary proof of the same.  The defendants further bring forth the concept of trans-border reputation stating that "The trademark registrations in other countries would show that the trade dress of the Rubik's Cube enjoys statutory protection, recognition and popularity in a significant number of countries worldwide. The goodwill and reputation as part of products of plaintiff No.1 in India and its recognition and popularity has seeped into India on account of transborder reputation."[7] The defendants further rely on several judgments to show that trade dress must be examined in its entirety and not looking at specific elements like L'oreal India Pvt. Ltd. v. Henkal Marketing India Ltd.[8] and Kellogg Company v. Pravin Kumar Bhadabhai[9] and the case law of Frito Lay India v. Uncle Chips Pvt. Ltd.[10]which states that competition must be free. Additionally, reliance is placed on s. 15(2) of the Copyright Act, 1957 and the case of Microfibres Inc v. Girdhar Co.[11] which states that copyright ceases to exist when more than 50 copies of the product are made. In addition to this, the defendants also state that only colors cannot be monopolized as they are not distinctive and lack creative or artistic input, relying on Colgate Palmolive v. Anchor Health.[12] Further, the primary colors of the cube are a functional element of the puzzle and cannot be monopolized. The defendants also allege that the patent to the invention of "Magic Cube" has expired and the product is now in the public domain. Furthermore, reference to the puzzle as "Rubik's Cube" is not an indicative of the reputation and good will that the product carries, quoting the examples of packaged drinking water being known as 'Bisleri' commonly and photocopies being called 'Xerox'. The defendants also rely on Cipla v. M.K. Pharmaceuticals[13] to indicate as to how the trade dress of medicine worked in favour of the second entrant to the market.
Observations & Conclusions of the Court
Manmohan Singh, J. decided the matter on September 6, 2016 making interesting observations with regard to the general nature of trade dress, deciding on the test against which passing off and deceptive similarity must be determined, the extent of unfair trade practice by the second or subsequent entrant in addition to the actual dispute of granting of an interim relief to the plaintiff on the existence of a strong prima facie case.
In the case of Hodgkinsons and Corby v. Wards Mobility[14], the English courts had held that the test for determination of passing off was a 3 step process where – the plaintiff must have considerable goodwill in the market, there must be misrepresentation by the respondent and there must be consequent damage caused to the plaintiff. Justice Singh relies on Microlube India Ltd. v. Rakesh Kumar Trading as Saurabh[15] to state that regardless of subsistence of design right or its exhaustion, a passing off action can lie in given cases and discusses the observations of the case of Laxmikant V. Patel v. Chetanbhat Shah and Another[16], to state that passing off would be when a competitor initiates sale of goods and services in the same name or imitates the name causing injury to the business of the one who has property in that name. While commenting on the general nature of trade dress and thus what would comprise of passing off, Justice Singh uses the case of William Grant and Sons v. McDowell & Co. Ltd.[17]which further states for injunction there must be material disclosing that the public associates the object in question only with the plaintiffs. The case of William Edge & Sons Limited v. William Niccolls & Sons Limited[18] is relied on to explain that simply naming a product that was previously unnamed but had considerable popularity in the market as belonging to the subsequent entrant would not be distinguishing of the goods but would give the impression as belonging to the original manufactures and hence, passing off. The case of Anglo Dutch Paint Colour and Varnish Works Pvt. Ltd. v. Indian Trading House[19] is also reiterated to explain that the subsequent entrant had no reason to use the applicant's color arrangements save as with the improper motive of benefitting from his good will and the essential question that needs to be asked is why the same colours would be used but to attract the plaintiff's goodwill and trade reputation which would amount to passing off. Justice Singh also uses the case law ofReckitt & Colman Products Ltd. v. Borden Inc. & Ors.[20] to reiterate that the question that needs to be asked here is not whether the plaintiff can sell his product the way he does but why the defendant would deliberately adopt the same and the case of Colgate Palmolive v. Anchor Health[21] which states that "Trade dress is the soul of identification of a product" and the test for passing off is likelihood of confusion or deceptiveness and it is the duty of the subsequent comer to avoid unfair competition and become unjustly rich. This is also explained in the case of Cadbury v. Neeraj Food Products[22]where it is stated that deception is the essence of the tort of passing off.
Justice Singh clarifies the position with respect to where similarities or dissimilarities are to be considered in the case of the tort of passing off, stating that it was the points of similarity that need to be considered rather than the points of dissimilarity thus taking into consideration the judgments of S.M.Dyechem v. CadburyIndia Ltd.[23]and Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd[24]. Relying on the judgment of Sanjay Kapur v. Dev Agri Farms[25] and several other judgments cited within the case, the learned judge in this judgment states that affixing their own label does not amount to exclusive trade dress capable of distinction and there must be clear distinctions and the duty lies on the second entrant to ensure that he is not indulging in unfair trade practices or free riding the goodwill and reputation of an existing competitor. Justice Singh also states that monopoly over a single colour can surely not be enjoyed but that is certainly not the case here as it is the combination of colours that the plaintiff allege as infringed and is protected as their trademark. There exists considerable goodwill on the side of the plaintiff and they do have a huge reputation in the market, thus ensuring that the mark is well known under s. 11(6) of the Trade Marks Act. In arguendo, although the defendants claim that they can change the shape of the cubes to make them distinctive of the plaintiff's product, Justice Singh states that this question can be answered later, when such case arises. The defendants relying on the case of Cipla v. M.K. Pharmaceuticals[26] is also declared as wrong as the purchase of toys is distinct from that of medicines which is elaborated in the judgment.
Therefore, the Delhi High Court in this case ruled in favour of the plaintiff finding a prima facie case and granted them an injunction against the product of the defendants while also clarifying significant changes with respect to trade dress protection. This case is certainly an essential to understand the concept of trade dress and the extent of protection in the light of monopoly over colours, the test of similarities and labeling products if indicative of distinctiveness. However, Hon'ble Court has also specifically mentioned that the findings are tentative in nature and the same shall not have any bearing when the same would be decided on merits. It would be interesting to note the final outcome of the suit.
References:
  1. Wal-Mart Stores vs. Samara Bros., 529 U.S. 205, 120 S. Ct. 1339 (2000).
  2. Vision Sports, Inc. v. Melville Corp. 12 USPQ 2d 1740.
  3. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  4. Seven Towns v. Kiddland, I.A. No.13750/2010 in CS(OS) No.2101/2010, as decided on September 06, 2016.
  5. Ideal Toy Corporation v. Plawner Toy Mfg. Corp, 685 F.2d 78 (3rd Cir. 1982).
  6. Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1.
  7. Seven Towns v. Kiddland, Para 16.
  8. L'oreal India Pvt. Ltd. v. Henkal Marketing India Ltd, 2005 (6) BomCR 77.
  9. Kellogg Company v. Pravin Kumar Bhadabhai, 1996 (36) DRJ 509.
  10. Frito Lay India v. Uncle Chips Pvt. Ltd., (2000) 86 DLT 31.
  11. Microfibres Inc v. Girdhar Co, (2006) 128 DLT 238.
  12. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  13. Cipla v. M.K. Pharmaceuticals, MIPR 2007 (3) 170.
  14. Hodgkinsons and Corby v. Wards Mobility, [1997] FSR 178.
  15. Microlube India Ltd. v. Rakesh Kumar Trading as Saurabh, (2013) 198 PTC 120.
  16. Laxmikant V. Patel v. Chetanbhat Shah and Another, (2002) 3 SCC 65.
  17. William Grant and Sons v. McDowell & Co. Ltd., 55 (1994) DLT 80.
  18. William Edge & Sons Limited v. William Niccolls & Sons Limited, (1911) AC 693 at 709.
  19. Anglo Dutch Paint Colour and Varnish Works Pvt. Ltd. v. Indian Trading House, AIR 1977 Delhi 41.
  20. Reckitt & Colman Products Ltd. v. Borden Inc. & Ors., 1990 R.P.C. 341 at page Nos.414 to 416, 422, 426.
  21. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  22. Cadbury India Ltd. v. Neeraj Food Products, 142 (2007) DLT 724.
  23. S.M.Dyechem v. Cadbury India Ltd., (2000) 5 SCC 574.
  24. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 783.
  25. Sanjay Kapur v. Dev Agri Farms, 2014 (59) PTC 93 (Del).
  26. Cipla v. M.K. Pharmaceuticals, MIPR 2007 (3) 170.

Source: http://www.mondaq.com/india/x/545258/Trademark/Seven+Towns+V+Kiddland+Delhi+High+Court+On+Trade+Dress+Protection


Sunday, March 29, 2015

Delhi High court grants interim injunction; restrains Glenmark from selling generic version of anti-diabetic drug Januvia (Sitagliptin)


On April 2013, Glenmark launched the generic version of Merck’s popular antidiabetic drug Januvia (Sitagliptin) and Janumet (combination of sitagliptin and Metformin). Subsequently Merck filed a suit against Glenmark seeking interim relief. The Delhi HC (Justice Rajiv Sahai Endlaw) denied interim relief to Merck. After denial of interim relief, Merck was also briefly engaged in mediation with Glenmark over the Januvia patent. Readers may recall that we had blogged about it here here and here. Aggrieved by the denial of interim relief Merck also filed an appeal, seeking injunction.The Delhi High court division bench granted the interim injunction. This post aims to analyze the interim injunction order. IN209816 (product patent claiming Sitagliptin) is the subject of the present suit.(Long post warning*)

Merck’s arguments:
Merck contended that Sitagliptin Phosphate Monohydrate cannot be prepared without manufacturing the active ingredient, the Sitagliptin molecule. Merck also alleged that Glenmark willfully infringed the suit patent.
Glenmark’s arguments
Glenmark alleges that the patent is invalid under Section 64(1) of the Indian patents act:
The patent is lacks inventive step over prior art, patent. Glenmark further alleged that the suit patent is a “cut and paste job” from these two patents, specifically European Patent 1406622 and WO2001034594 A1.
The complete specification of the patent does not sufficiently and fairly describe the invention and the method by which it is to be performed, since the patent does not describe the preparation of the Sitagliptin free base or Sitagliptin phosphate monohydrate, but only its hydrochloride salt
Strangely enough, Glenmark also contended that the suit patent is not useful and lacksindustrial applicability because Sitagliptin free base is itself unstable. Glenmark also stated that the Sitagliptin phosphate monohydrate was the molecule used in the clinical trial, and not Sitagliptin Free Base.
The claim goes much beyond the limited disclosures in the specification, and thus the claim is over-broad or an impermissible Markush claim that creates a false monopoly.
Glenmark alleges that Merck did not comply with its obligation under Section 8 of the act to disclose patent applications made for the “same or substantially the same invention”. It was alleged that Merck did not disclose 5948/DELNP/2005 (for Sitagliptin Phosphate Monohydrate), 1130/DELNP/2006 (Sitagliptin Phosphate Anhydrate), 2710/DELNP/2008 (Sitagliptin plus Metformin) or subsequent international applications for these compounds either.
I wonder; where does one draw the line for Section 8 disclosure? What amounts to “disclosure of same or substantially same inventions” is a grey area! In my opinion 5948/DELNP/2005, 2710/DELNP/2008,1130/DELNP/2006 and their foreign equivalents are subject matters of separate patents and are not divisionals and do not claim priority from the original product patent IN209816.If section 8 requires one to disclose all related applications in the relevant arena – this is a separate patent landscape project in itself.
Curiously, Glenmark also argues that Sitagliptin phosphate monohydrate is qualitatively different from the Sitagliptin free base – it has enhanced pharmaceutical qualities (the reverse Section 3(d) argument so to speak!).This, according to Glenmark, means that the manufacture of Sitagliptin phosphate monohydrate does not violate a patent for the Sitagliptin free base simpliciter.
Courts observations:
In an exceedingly well reasoned judgement the Division bench (Justice Ravindra Bhat and Justice Najwi Wazir) of the Delhi High court made the following observations:
Regarding prior art the court notes that irrespective of whether the two patents are similar or not, EP 1406622 was published on after the priority date for the suit patent, and therefore does not qualify as prior art.
Regarding sufficiency of disclosure in the complete specification, the court observed that the patent sufficiently discloses the Sitagliptin free base, which in itself is clear, precise. The question whether the suit patent sufficiently discloses Sitagliptin phosphate monohydrate was left open.
Regarding industrial applicability, the court rightly observed that while the patent claims disclose the Sitagliptin free base, the description relating to the issue of industrial applicability recognizes that the Sitagliptin free base will be attached to some carrier (salt form). That carrier, however, is NOT the crux of the invention but only an inert component that does not add value to the therapeutic or medical value, which is the true core of the invention. It would be a far cry to hold that Sitagliptin is useless for any known purpose. The Court also noted that Sitagliptin was not known before, and its introduction allows for the inhibition of the DPP IV enzyme in such a manner as previously unknown, whether through one inert carrier or another.
Regarding Markush claims, , for the limited issue in these interim hearings the Court notes that the Markush formula and all combinations “share a common use or property” and “ share common structure factors relevant to determine the validity of a Markush patent, as per the Draft Guidelines of Indian patent office. The court opined that whilst it may be appealing at first blush to limit a pharmaceutical patent only to the exact and precise compounds and chemical structures disclosed, that may render genuine medical inventions to naught.
Regarding Section 8 (foreign filing disclosures) the court observed that Merck in the modified Form 3, disclosed foreign filings for patent related to combinations of Sitagliptin and metformin. The Court further stated that Section 8 only mandates the disclosure of patent applications outside India and not within. This is clear from the wording of Section 8 itself.
Conclusion:
The court also frowned upon Glenmark’s at risk launch and observed that the fact that Glenmark did not utilize the opposition mechanisms weighed in favour of grant of interim injunction.
The court carefully and meticulously evaluated the three factors involved in grant of interim injunctions.
Prima facie case: The court succinctly captured the crux of the case and noted that Merck had established a strong prima facie case on the merits of the suit claim. It is established that Glenmark uses Sitagliptin free base as the active component in its chemical formulation. The court was totally unimpressed with the unsubstantiated argument advanced by Glenmark that their generic version uses Sitagliptin Phosphate monohydrate, which is manufactured directly without using the Sitagliptin free base. The court further stated that the fact that Merck unsuccessfully pursued a separate patent for Sitagliptin Phosphate is irrelevant .Thus; prima facie infringement of Merck’s patent is established, in the opinion of this Court.
Irreparable injury: Whether the claimant would suffer irreparable injury in the absence of interim injunction?- It may be argued that no injunction should be granted since all damages from loss of sales can be compensated monetarily ultimately. For this argument – the court countered that, prices may not recover after the patentee ultimately prevails, even if it is able to survive the financial setback (or “hit”) during the interim, which may take some time. The victory for the patentee therefore should not be pyrrhic but real.
Balance of convenience: The court must look at the public interest in granting an injunction, as access to drugs, is an important factor especially in case of a condition as prevalent as diabetes. Here, the price difference between the commercial products sold by Glenmark and MSD is not so startling as to compel the court to infer that allowing Glenmark to sell the drug, at lower prices would result in increased access. The court observed In the Hoffman la Roche case the price differential was about 300% and therefore in that case, held that balance of convenience did not lie in favour of grant of injunction as the possibility of several thousand being denied access to the generic drug was real.



http://spicyip.com/2015/03/delhi-high-court-grants-interim-injunction-restrains-glenmark-from-selling-generic-version-of-anti-diabetic-drug-januvia-sitagliptin.html



Wednesday, February 11, 2015

Delhi High Court restrains distribution and exhibition of Badmashiyaan

Delhi High Court has issued an order restraining the distribution and exhibition of the film after a complaint of copyright infringement was filed against makers of the film VRG Motion Pictures.

MSM Motion Pictures and Kaleidoscope filed a plea stating that Badmashiyaanwas a blatant copy of the Korean film Couples, whose rights had been acquitted by them for their yet to release film Mango

"The Delhi High Court has restrained the distribution and exhibition of the trailer and the film titled Badmashiyaan, on the basis of a claim for copyright infringement by MSM and Kaleidoscope. The Plaintiffs claimed that Badmashiyaan is a copy of the Korean film Couples and their yet to be released film, Mango. The plaintiffs also claimed this relief based on an exclusive right that they obtained from the producer of Couples to make the Hindi language remake of Couples."

http://www.bollywoodhungama.com/news/4665685/Delhi-High-Court-restrains-distribution-and-exhibition-of-Badmashiyaan

Sunday, December 22, 2013

Foreigners can edit Indian newspapers: Delhi high court

The Delhi high court refused to intervene on a PIL seeking Indian citizenship should be the "pre-requisite qualification" for a person to be appointed as the editor of a publication in the country.
The HC said the issue must be settled by Parliament and hoped it will find time to take it up for discussion.
A division bench of Justices Pradeep Nandrajog and VK Rao rejected the plea of Subramanian Swamy. "Hoping that Parliament would find some time to consider the Press and Registration of Books and Publication Bill, 2011, which is pending consideration now for over two years, we dismiss the writ petition declining relief as prayed for," the court said.
Swamy had approached HC seeking a direction to the central government to rectify a lacuna in the Press and Registration of Books Act regarding the definition of editor. But the HC said it is not for the judiciary to wade into the debate.
"It may be true that even the legislature has so opined evidenced by the fact that the Press and Registration of Books and Publication Bill, 2011 which has been cleared by the select committee and is pending before parliament has suggested amendment to the act by defining editor to mean a person who is not only an ordinary resident in India but is also a citizen of India. But it is for the legislature to consider the bill at the floor of the House and not for the court to legislate," it said.
Swamy had argued that the foreign direct investment policy of the Indian government, in the domain of publications, allows 74% stake with the precondition that in the print media, at least three-fourth of the board of a print media company must be Indians and all key editorial posts must also lie with resident Indians.
http://articles.timesofindia.indiatimes.com/2013-12-18/india/45336343_1_subramanian-swamy-delhi-high-court-indian-citizenship

Monday, December 16, 2013

Delhi High court - pleadings in patent copyright infringement cases

In two interesting judgments, in two different cases, Justice Murlidhar of the Delhi High Court has ruled on the scope of pleadings in patent infringement lawsuits and the liability of Indian subsidiaries of global app-stores in copyright infringement lawsuits filed by a book publisher.
1. Telefonaktiebolaget LM Ericsson v. Mercury Electronics & Anr.
This is the famous Micromax case that we have blogged about previously on the blog overhere and here. Ericsson has sued Micromax for a sum of Rs. 100 crores for infringing 6 of its standard essential patents and even got an ex-parte interim injunction on the very first day.
This specific order of Justice Murlidhar, dated December 6, 2013 (available over here) was necessitated by an interlocutory application filed by Ericsson under S. 151 of the CPC requesting the Court to take on record certain affidavits by Ericsson’s executives and a claim-chart in a sealed envelope. The order is not very clear on why these affidavits were filed under S. 151 (which deals with the ‘inherent powers of the court and is supposed to be a provision of the last resort).
Micromax however did object to the attempt to bring on record the affidavits, with its counsel Akhil Sibal arguing as follows:
“Ericsson has failed to construe each of the suit patent claims in the body of the plaint itself. He submits that in a suit for infringement of patents, it was mandatory for the Plaintiff to set out, in detail, the claims under the patents as well as explain whether the patent covered a particular component/element/device/method etc. corresponding to a technical specification for a technology that forms a part of a standard. In other words, it was necessary for the Plaintiff to show that the suit patent was an essential patent for such standard. According to him, merely describing the function of each patent, as has been done in para 20 of the plaint, is insufficient. He stated that the plaint only described the net result that could be achieved by deploying the suit patents and not how that result was achieved.”
Sibal continued with the argument that “that the attempt to bring on record the affidavit of Mr. Olofsson ought not to be permitted. It would amount to indirectly permitting the plaint to be amended to make good an obvious defect. He submitted that Court should consider Ericsson’s prayer for interim injunction only on the basis of the existing pleadings without taking into account the affidavit of Mr. Olofsson.”
 Given the fact that Singh & Singh the law firm representing Ericsson, engaged three top-notch Senior Advocates to argue the matter, it was obviously a high-stakes issue for Ericsson.
Examining the precedents on the point, the High Court summarised the position of law as follows “In sum, the law explained in the above decisions is that the plaint itself must set out with sufficient clarity the specifications and the claims under the suit patent, the results they seek to achieve and in what manner the defendants have infringed the suit patents.”
After examining the affidavits, the Court concluded that the information disclosed in the affidavits was within the purview of the plaint & the documents filed along with the plaint and hence Ericsson was allowed by the High Court to bring on record the affidavits. Ericsson can therefore use these affidavits to argue even the interim injunction.
The decision could have been more nuanced. For example a plaint is supposed to contain only facts and the issue of claim construction, infringement etc. are mixed issues of law and fact. Indian courts should therefore give plaintiffs more leeway in drafting of their pleadings. Expecting plaintiffs to pack their plaints with the most intricate details of their patents is going to make matter very complicated.
2. Blueberry Books & Othrs v. Google India Pvt. Ltd. & Othrs
In this first of its kind lawsuit, Blueberry Books a publisher of children’s books had sued a web and mobile application developer for making available books on an app titled “Story Time for Kids”, whose copyright was owned by the Plaintiff, through various app-stores, without taking prior permission of the Plaintiff. The remaining defendants were Google Inc., Research in Motion, Apple and Amazon, along with their Indian subsidiaries (with the exception of Amazon), because the app in question was made available through these online stores.
The present judgment of Justice Murlidhar, issued on November 28, 2012 (available overhere) was with specific regard to Order 1 Rule 10 applications filed by the Indian subsidiaries of Google, RIM & Apple on the grounds that they had no control over the app-stores in question.
Blueberry, argued that the subsidiaries were necessary parties since they had assets within India unlike their parent companies. The Court declined to buy this argument concluding that “The mere fact that Defendant No.2 happens to be the subsidiary of Defendant No.1 and Defendant No.3 a subsidiary of Defendant No.4 would not be sufficient for making them parties to the suit, if they are not, in any way, involved in the infringing activities complained of.” As a result, the Court deleted the subsidiaries of Google Inc. and RIM.
Apple,  was not so lucky. The Court ruled that prima facie it appeared that the iTunes stores could be accessed through the website of Apple India Pvt. Ltd. thereby giving enough cause to retain Apple India as a party to the suit. The Court ruled that the issue of whether Apple India Pvt. Ltd. had control over iTunes, could be decided only after evidence was led during trial.
Amazon Inc.,  argued that it should be exempted on the grounds of lack of jurisdiction since the app in question could be downloaded only within the U.S. Hence Amazon argued that only the American Courts would have jurisdiction over the claims for copyright infringement. Justice Murlidhar agreed and deleted Amazon from the array of parties.
ttp://spicyip.com/2013/12/delhi-hc-rules-on-pleadings-in-patent-lawsuits-app-stores-in-copyright-infringement-cases.html

Woman cannot claim right over property of in-laws, rules court


A woman has a right over the property of her husband but she cannot claim a right to live in the house of her parents-in-law, a Delhi court has said. The court made the observation while dismissing an appeal of a woman, who is a doctor in a government hospital here, seeking right of residence in her mother-in-law's house in which her husband does not have any share.

"If it is anybody against whom or against whose property she (woman) can assert her rights, is the husband, but under no circumstances can she thrust herself on the parents of her husband or can claim a right to live in their house against their consult and wishes," Additional Sessions Judge Kamini Lau said. The court said she is a working woman and being a doctor, she is in a position to maintain herself. "Keeping in view the problems and disputes between the parties, allowing the woman to stay in her parents-in-law's house against their wishes would only aggravate the existing domestic problems and create numerous hassles for these senior citizens, which this court will not permit," the judge said. The court also said even if the woman was permitted by her parents-in-law to live in their house, it does not create any legal right, violation of which would be actionable. On the contrary, under no circumstances the parents can be made to suffer the burdens of their sons and their estranged daughters-in-law, it said. The court's observations came while dealing with the appeal of the woman who had contended that her mother-in-law had abused and misused the process of law by making false submissions. She challenged the trial court's order saying it did not appreciate the fact that her mother-in-law had in connivance with her husband dispossessed her from shared household accommodation in Pitampura. She had sought to set aside the trial court's order dismissing her plea seeking right to residence in the house owned by her mother-in-law. The sessions court noted that the woman's husband was working and residing separately in Chandigarh for the past several years.

http//www.firstpost.com/india/woman-cannot-claim-right-over-property-of-in-laws-rules-court-1234413.html 

Sunday, August 25, 2013

Delhi HC decision may give competitive advertising a boost

HUL commercial does not denigrate Colgate product, comparison offers benefits to consumers, says court

The Delhi high court’s decision on the advertising war between Colgate Palmolive India Ltd and Hindustan Unilever Ltd (HUL)could set the tone for brands looking to take on their rivals in an increasingly competitive marketplace, say experts.
On Wednesday, the Delhi high court dismissed the injunction petition filed by Colgate against HUL’s ad for Pepsodent Germicheck toothpaste. The court declined to restrain HUL from advertising its toothpaste, saying that its commercial does not “denigrate” the product of its competitor Colgate. The advertisement in question shows two boys brushing their teeth with the competing brands, clearly on display. The ad goes on to claim that Pepsodent Germicheck has 130% germ attack power as compared to the 100% effectiveness of Colgate Strong Teeth after four hours of brushing.
The court observed that “advertisements that compare the product of a trader with the product of a market leader can offer the consumer better information about the product. They can also help to improve the overall quality of like products in the market and, in that process, the product of the market leader. Advertisements when viewed in a positive light can be seen as challenging the market leader to offer a better product at a competitive price. In the world of marketing, these are acknowledged business strategies adopted by traders having to compete in a market, dominated by one or a few players. The market leader should view this as an opportunity to offer a superior product at a competitive price.”
“The Hon’ble Delhi High Court dismissed on 21 August 2013, the injunction petition filed by Colgate against the Pepsodent Germicheck Superior Power advertisement. We are pleased with the court decision,” a spokesperson for HUL, said in a statement. A Colgate spokesperson said that the company had just received a copy of the judgment. “We are examining the judgment and will take appropriate action.”
The decision by the court could have a direct bearing on competitive advertising in India, said experts. According to K.V. Sridhar, chief creative officer, Indian–subcontinent for advertising agency Leo Burnett, this decision will give confidence to brands to take on the market leaders provided they have a valid claim. “At the end of the day, every judgment is a double-edged sword. Some will use it, others will misuse it,” he said. Aggressive competitive advertising is not new to the industry, however, it is important to ensure that brands explain how such advertising benefits the consumer, he said.
“The consumer is not interested in scientific log tables. They want to know if it means that the toothpaste will help their child brush less or protect their teeth even if they missed brushing their teeth at night.”
While this may change the way competitive advertising is viewed by brands, it is hardly going to set off a flurry of aggressive campaigns, according to Kiran Khalap, co-founder Chlorophyll Brand and Communications Consultancy Pvt. Ltd. He said that even in mature markets, comparative advertising accounts for a very small percentage of the overall advertising probably owing to research that shows it may elicit a negative response.
“When the challenger does compare (itself) with the leader, the advertisement works better if it adopts the tone of a leader,” he said. In the legendary advertising wars between Pepsi and Coca-Cola, Pepsi’s tone was humorous, tongue-in-cheek and confident, rather than desperate as if it were straining to prove its superiority, he said.
To be sure, consumer goods companies have started registering more complaints with regulatory bodies and courts against their rivals making counterclaims through competitive advertising. An earlier Mintreport said that the Advertising Standards Council of India (ASCI) has seen a sevenfold rise in the number of complaints received in fiscal 2013 over fiscal 2012. In 2013, companies raised objections to 784 advertisements, of which 640 were upheld by ASCI.
In the recent past, Hindustan Unilever launched an advertisement for its Vim dish-wash taking potshots at Reckitt Benckiser India Ltd’s extension of its antiseptic and disinfectant brand Dettol into dish-washing with Dettol Healthy Kitchen Gel. Saffola oil maker Marico Ltd moved the Delhi high court, challenging advertisements by Adani Wilmar Ltd’s Fortune rice bran oil that claimed 100% rice bran oil was “the healthiest oil in the world”. Marico later withdrew its plea.
Interestingly, the advertisement for Pepsodent was first aired on 9 August, ahead of a long weekend during which Colgate couldn’t take legal recourse.