Friday, April 4, 2014

Is a Composite Suit for Design Infringement and Passing off of the Design Maintainable?

Last May, I had reported a full-bench opinion delivered by the Delhi High Court on the following issues:

(1) Whether a suit for infringement of registered design is maintainable against the another registered proprietor of the design under the Designs Act, 2000;

(2) Whether there can be availability of remedy of passing off in the absence of express saving or preservation of common law of Designs Act, 2000 and more so when the rights and remedies under the Act are statutory in nature; and

(3) Whether the conception of passing off as available under the trademarks can be joined with the action under the Designs Act when the same are mutually inconsistent with that of remedy under the Designs Act.

Following is the majority opinion of the Court on these issues:

(i) A plaintiff could institute a suit for infringement of a design against a defendant, who was also a holder of a registered design. The expression "any person" found in Section 22 of the Designs Act would not exclude a subsequent registrant as, according to us, no such words of limitation are found in said Section.

(ii) The plaintiff would be entitled to institute an action of passing off in respect of a design used by him as a trade mark provided the action contains the necessary ingredients to maintain such a proceeding. The argument that such a suit could be instituted only after the expiry of the statutory period provided under Section 11 of the Designs Act, does not find favour with us. This is for the reason that in a given fact situation the plaintiff may have commenced the use of the design as a trademark after its registration. While Section 2(d) of the Designs Act excludes from the definition of a design, any trademark which is defined as such in clause (v) of sub-Section (1) of Section 2 of the 1958 Act or property mark, as defined in Section 479 of the IPC, or any artistic work as defined in clause (c) of Section 2 of the Copyright Act -the use of the design as a trademark post its registration, is not stipulated as a ground for cancellation under Section 19 of the Designs Act.

(ii) (a) In this context we must note the argument of Ms Singh, learned amicus, that passing off action may perhaps be maintainable provided the mark has attained secondary meaning. In our opinion, the issue before us is limited to whether a remedy by way of passing off action would be available qua a registered design used as a trademark by the plaintiff - we are not inclined to comment on the quality of evidence which may be required, if at all, to be produced by the plaintiff to prove whether the mark has acquired the necessary secondary distinctive meaning, for him to secure success, in the action instituted in that behalf.

(iii) We are also of the view that a composite suit for infringement of a registered design and a passing off action would not lie. The Court could, however, try the suits together, if the two suits are filed in close proximity and/or it is of the view that there are aspects which are common to the two suits. The discretion of the court in this matter would necessarily be paramount.

36. Accordingly, our answers to the three issues are as follows:
ISSUE No.I: A holder of a registered design could institute a suit against a defendant who is also in possession of a registered design
ISSUE No.II: A holder of a registered design can institute an action for passing off.
ISSUE No.III: The two actions cannot be combined in one suit

Recently, I had the occasion to re-visit the Court’s opinion on issue 3 i.e. is a composite suit for infringement of a registered design and for passing off of the design maintainable? Simply put, can the two causes of action be combined in the same suit? Both the majority and the minority opinions of the Court had answered in the negative.

I am not sure I agree with the opinion of the Hon’ble Court because if it is possible to file a composite suit for copyright and trademark infringement or a composite suit for trademark infringement and passing off, both of which arise from the same act or series of acts of the defendant, why is a composite suit for infringement of a registered design and passing off of the design not maintainable? Filing of civil suits and combining causes of action are issues dealt with by the Code of Civil Procedure, 1908 (better known as ‘CPC’ as opposed to ‘CCP’). The relevant provision to look into is Order 2, which deals with framing of a suit. In particular, Rule 3 of Order 2 is extracted below:

3. Joinder of causes of action
(1) Save as otherwise provided, a plaintiff may unite in the same suit several causes of action against the same defendant, or the same defendants jointly; and any plaintiff's having causes of action in which they are jointly interested against the same defendant or the same defendants jointly may unite such causes of action in the same suit.

(2) Where causes of action are united, the jurisdiction of the Court as regards the suit shall depend on the amount or value of the aggregate subject-matters at the date of instituting the suit.

Clearly, the provision deals with “joinder” of multiple causes of action in the same suit against the same defendant(s). If it is accepted that infringement of a registered design, and passing off of the design are two independent causes of action which arise from the same act or series of acts in a transaction of the same defendant(s), under Order 2 Rule 3 of the CPC both causes of action may be combined to file a composite suit, provided of course that both causes of action arise within the territorial jurisdiction of the same Court (following the law laid down by the Supreme Court in Dhodha House v. S.K.Maingi).

After all, the running of theme of the framework of the CPC is that multiplicity of proceedings must be avoided wherever it can be avoided. Therefore, if multiple causes of action arise in the same infringing act or series of acts of the defendant, the CPC provides a mechanism to combine the causes of action for a consolidated adjudication by the same Court on multiple aspects of the defendant’s conduct.

Surprisingly, there is no discussion of Order 2 Rule 3 in both the majority and minority opinions. I am honestly unsure of the reason for the absence of a discussion on the applicability of this provision to the issue, since to my mind the provision appears most pertinent to it. Instead, the Court, in its majority opinion, undertook a discussion on Order 2, Rule 2 which deals with inclusion/severability of claims and reliefs. The provision is reproduced below:

2. Suit to include the whole claim
(1) Every suit shall include the whole of the claim which the plaintiff is entitled to make in respect of the cause of action; but a plaintiff may relinquish any portion of his claim in order to bring the suit within the jurisdiction of any Court.
(2) Relinquishment of part of claim. --Where a plaintiff omits to sue in respect of, or intentionally relinquishes, any portion of his claim, he shall not afterwards sue in respect of the portion so omitted or relinquished.
(3) Omission to sue for one of several reliefs.--A person entitled to more than one relief in respect of the same cause of action may sue for all or any of such reliefs; hut if he omits, except with the leave of the Court, to sue for all such reliefs, he shall not afterwards sue for any relief so omitted.

This requires us to understand the distinction between “claim”, “relief” and “cause of action” because clearly they aren’t the same, as reflected by the wording of Order 2 Rule 2 itself. Once the distinction is understood, it becomes easier to appreciate as to which of the two provisions, Order Rule 2 and Order 2 Rule 3, apply to the issue at hand.

“Cause of action” has been defined, and accepted by the Supreme Court to mean “every fact which it would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the court. It does not comprise every piece of evidence which is necessary to prove each fact, but every fact which is necessary to be proved." Simply put, a fact which has resulted in or amounts to infraction of the Plaintiff’s right that has in turn given rise to a “cause”/ his right to sue is “cause of action”.

Since a “claim” is made in respect of a “cause of action”, it perhaps refers to the redressal sought by way of compensation for the infraction of the Plaintiff’s right. On the other hand, “relief” refers to the form of solace that the law offers to an injured Plaintiff. Consequently, “reliefs” under the law could mean injunctive reliefs, pecuniary reliefs and the like. These “reliefs” constitute “prayers” in the Plaint.

Based on the above, it is clear that infringement of a registered design, and passing off of the design fall under the category of “causes of action”, meaning thereby that in order to understand where the 2 may be combined in a suit, the provision to be looked into is perhaps Order 2, Rule 3, and not Order 2, rule 2.

To summarize, I think it is possible to file a composite suit for infringement of a registered design and for passing off of the design. I look forward to the opinions of our readers.

Tuesday, April 1, 2014

Delhi High Court Restrains NATCO from Exporting Generic Version of Bayer’s Nexavar under the Compulsory Licence

In a Writ Petition (W.P(C) 1971/2014) filed by Bayer Corporation in the Delhi High Court, NATCO has been restrained, by order dated March 26, 2014, from exporting generic versions of Bayer’s patented drug Nexavar (IN215758) on which a Compulsory Licence was issued by the Controller of Patents on March 9, 2012 and upheld by the IPAB on March 9, 2013.

In its petition, Bayer sought the Court’s intervention to direct the Customs authorities to seize and confiscate NATCO’s generic version of Nexavar, “Sorafenat” since the Compulsory License granted to NATCO allowed it to sell the drug only within the territory of India. In this regard, it would help to refer to Section 90 of the Patents Act, 1970 which spells out the terms and conditions under which a Compulsory Licence is granted. Section 90(1)(vii) and (ix) read as follows:

“(vii) that the licence is granted with a predominant purpose of supply in the Indian market and that the licensee may also export the patented product if need be in accordance with the provisions of sub-clause (iii) of clause (a) of sub-section (7) of section 84;

(ix) that in case the licence is granted to remedy a practice determined after judicial or administrative process to be anti-competitive, the licensee shall be permitted to export the patented product, if need be.”

Under Section 90(1)(vii), it appears that a compulsory license is granted for the “predominant”, and not for the “sole” purpose of supply of the patented article in the Indian market. In other words, the Controller may grant a compulsory license to develop an export market as well. However, such a right of export must be expressly provided for in the licence.  Similarly, under Section 90(1)(ix), it appears that permission must be expressly granted to export the patented product if the licence is granted to remedy an anti-competitive practice, subject to there being a need for export.

In the facts of the case, Clause (g) of the Terms and Conditions of the licence clearly stipulate that the grant of the licence is limited to the territory of India. NATCO denied that it had violated this stipulation and submitted that the availability of the drug outside the country was to be attributed to individual buyers and retailers abroad. After hearing the parties, the Court directed NATCO to ensure that no consignment containing the drug covered by the Compulsory License was exported.

NATCO also sought permission to send samples of active ingredients of the drug for generation of clinical data for submission to the Drug Controller General of India. To this request by NATCO, strangely, the Court granted it the liberty to apply to the Court “for permission to export the drug as and when it obtains permission from the DCGI for clinical purposes”. I am not sure if NATCO’s request was understood correctly because NATCO was making a valid request under Section 107A(a), the Bolar Exemption, which permits use of the drug for generation of clinical data.

In fact, I don’t think NATCO needs the Court’s permission to exercise a statutory right under Section 107A(a). Although Section 107A(a) does not expressly recognize the right of export, the right to “use” may be interpreted broadly to cover export, particularly since the provision recognizes the right to use a patented article for submission of regulatory information even outside India.

We will keep our readers posted on the developments in this case.

Wednesday, March 26, 2014

Does the IPAB have the Power to Review its Own Decisions?

The provision that vests the Intellectual Property Appellate Board (IPAB) with the powers of a civil court is Section 92 of the Trademarks Act, which is reproduced below:

92. Procedure and powers of Appellate Board.-
(1) The Appellate Board shall not be bound by the procedure laid down in the Code of Civil Procedure, 1908 (5 of 1908 ) but shall be guided by principles of natural justice and subject to the provisions of this Act and the rules made thereunder, the Appellate Board shall have powers to regulate its own procedure including the fixing of places and times of its hearing.
(2) The Appellate Board shall have, for the purpose of discharging its functions under this Act, the same powers as are vested in a civil court under the Code of Civil Procedure, 1908 (5 of 1908 ) while trying a suit in respect of the following matters, namely:-
(a) receiving evidence;
(b) issuing commissions for examination of witnesses;
(c) requisitioning any public record; and
(d) any other matter which may be prescribed.
(3) Any proceeding before the Appellate Board shall be deemed to be a judicial proceeding within the meaning of sections 193 and 228, and for the purpose of section 196, of the Indian Penal Code (45 of 1860 ), and the Appellate Board shall be deemed to b a civil court for all the purposes of section 195 and Chapter XXVI of the Code of Criminal Procedure, 1973 (2 of 1974 ).

This provision is largely identical to Section 77 of the Patents Act and Section 127 of the Trademarks Act. However, the power of review is conspicuous by its absence. Can it be argued that the power of review is an inherent one? 

This issue was addressed in the IPAB’s order no. 134/2009 dated August 21, 2009 in OA/1 /2007/PT/CH. In this decision, the IPAB held that since the Board was the creation of a statute, it could not vest itself with powers of substantive review unless the statute expressly provided for it. The power of procedural review, however, being ancillary to its function, was inherent in it. To support this, the Board cited a few decisions of the Supreme Court, the Grindlays decision being a prominent one.

Reproduced below is the relevant extract from the Grindlays decision:

The decision in Narshi Thakershi v. Pradyumansinghji is distinguishable. It is an authority for the proposition that the power of review is not an inherent power, it must be conferred either specifically or by necessary implication. Sub-sections (1) and (3) of s. 11 of the Act themselves make a distinction between procedure and powers of the Tribunal under the Act. While the procedure is left to be devised by the Tribunal to suit carrying out its functions under the Act, the powers of civil court conferred upon it are clearly defined. The question whether a party must be heard before it is proceeded against is one of procedure and not of power in the sense in which the words are used in s. 11. The answer to the question is, therefore, to be found in sub-s. (1) of s. 11 and not in sub-s. (3) of s. 11. Furthermore, different considerations arise on review. The expression 'review' is used in two distinct senses, namely (1) a procedural review which is either inherent or implied in a court or Tribunal to set aside a palpably erroneous order passed under a misapprehension by it, and (2) a review on merits when the error sought to be corrected is one of law and is apparent on the face of the record. It is in the latter sense that the Court in Narshi Thakershi's case held that no review lies on merits unless a status specifically provides for it. 

Monday, March 3, 2014

Summary Procedure for Grant of a Compulsory License under Section 92 in Special Circumstances

Section 92 of the Patents Act provides a summary/accelerated mechanism under which Compulsory Licences (CL) may be issued by the Controller of patents pursuant to a notification by the Central/Union Government. Here’s the provision:

Section 92. Special provision for compulsory licences on notifications by Central Government
(1) If the Central Government is satisfied, in respect of any patent in force in circumstances of national emergency or in circumstances of extreme urgency or in case of public non-commercial use, that it is necessary that compulsory licenses should be granted at any time after the sealing thereof to work the invention, it may make a declaration to that effect, by notification in the Official Gazette, and thereupon the following provisions shall have effect, that is to say—

(i) the Controller shall, on application made at any time after the notification by any person interested, grant to the applicant a licence under the patent on such terms and conditions as he thinks fit;

(ii) in settling the terms and conditions of a licence granted under this section, the Controller shall endeavour to secure that the articles manufactured under the patent shall be available to the public at the lowest prices consistent with the patentees deriving a reasonable advantage from their patent rights.

(2) The provisions of sections 83, 87, 88, 89 and 90 shall apply in relation to the grant of licences under this section as they apply in relation to the grant of licences under sec. 84.

(3) Notwithstanding anything contained in sub-section (2), where the Controller is satisfied on consideration of the application referred to in clause (i) of sub-section (1) that it is necessary in—
(i) a circumstance of national emergency; or
(ii) a circumstance of extreme urgency; or
(iii) a case of public non-commercial use,
which may arise or is required, as the case may be, including public health crises, relating to Acquired Immuno Deficiency Syndrome, human immune deficiency virus, tuberculosis, malaria or other epidemics, he shall not apply any procedure specified in section 87 in relation to that application for grant of licence under this section:

PROVIDED that the Controller shall, as soon as may be practicable, inform the patentee of the patent relating to the application for such non-application of section 87.

Based on a reading of the provision, it is clear that the provision is to be invoked in extra-ordinary circumstances involving “national emergency” or “extreme urgency” or “public non-commercial use”. The mechanism under this provision is set in motion by and when the Central Government notifies in the Official Gazette that such extra-ordinary circumstances have necessitated the grant of compulsory licences in relation to patents which help to address the exigency.

However, Section 92(2) still requires a person interested to apply to the Controller for grant of a compulsory licence. That said, the primary differences between CL under Sections 84 and 92 are as follows: 
1.       Under Section 84, an application for a CL may be made only after expiration of 3 years from the date of grant of the patent, whereas under Section 92 the Central Government may notify for issuance of a CL anytime after the sealing of the patent.
2.       The grounds for grant of a CL under Section 84 are different from the exigencies dealt with by Section 92.
3.       Under Section 92(3), the procedure for opposition by the patentee and hearing prescribed in Section 87 may be given a go by if the Controller is satisfied that the situation demands it.

The question that could arise is what is the distinction between “national emergency and extreme urgency”? National emergency clearly refers to a nation-wide crisis or at least a public crisis, whereas “extreme urgency” could refer to an individual crisis where the condition is extremely rare and restricted to an individual or a few individuals, both of which requiring immediate action.

The point that emerges is that a sense of immediacy appears necessary for Section 92 to be invoked by the Central Government citing national emergency or extreme urgency. Consequently, if a health condition is rare but is not immediately fatal or there is no outbreak of an epidemic (in other words there is no “national emergency” or “extreme urgency”), but the drug is exorbitantly priced or is not adequately available, Section 92 may not be the appropriate remedy. One would think Section 84 may be the apt provision for such a situation if the primary grievance is with respect to the pricing of the drug or its availability.

The third ground for grant of a CL under Section 92 is a case of “public non-commercial use”. This provision, on the face of it, does not have other restrictions which help us understand the nature of the situation when Section 92 may be invoked for public non-commercial use of patented inventions. In the absence of such indicators, the provision is capable of capricious use. To avoid this, it may be necessary to apply the spirit of the first two grounds under Section 92 to public non-commercial use. Simply put, the situation must be serious enough to warrant the grant of a CL for non-commercial use of a patented invention at a public scale.

If such a cautious approach is not adopted, Section 92 could become the option of first resort rendering Section 84 secondary, more so since Section 92 envisages waiver of the opposition and hearing procedure prescribed in Section 87.

I look forward to comments and corrections from readers. 

Friday, February 28, 2014

Teva v. NATCO: Analysis of the Delhi High Court’s decision

Earlier in the day, I had broken the news that the Delhi High Court had returned Teva Pharma’s plaint in its suit, C.S. (O.S) 3193/2012, for alleged infringement of its process patent 190759 on the manufacture of glatiramer acetate (sold under the name “Copaxone”) by Hyderabad-based NATCO Pharma. The decision was passed in an application under Order VII, Rule 10 of the CPC filed by NATCO seeking return of the plaint on grounds that the Delhi High Court was not the appropriate court to be seized of the matter. Here's a link to the decision

The 2007 Litigation- First Indian Suit
Teva had filed its first Indian suit against NATCO in 2007, CS (OS) No. 1708 of 2007, seeking injunction against infringement of its process patent 190759. One of the prayers sought was to restrain NATCO from exporting the allegedly infringing drugs, formulations/bulk drugs outside India. Issues were framed in this suit in May 2012, and trial is underway in it.

The 2009 US Litigation
In 2009, Hyderabad-based Mylan Labs filed an abbreviated new drug application (‘ANDA’) in the US seeking approval to manufacture and sell glatiramer acetate before the expiration of Teva's US patents. Teva sued Mylan and NATCO in the Southern District Court of New York alleging infringement of US Patent Nos. 7199098, 6939539, 6054430, 6620847, 5981589, 6342476, 5800808, 6048898 and 6362161. 

The US District court came to the conclusion that the product sought to be sold by the defendants in the US infringed the process claims of US6054430 and 6048898. However, the Federal Circuit invalidated the process claims in both these patents last year, which surprisingly has not been dealt with in the decision of the Delhi High Court.

The 2012 Litigation- Second Indian Suit
Teva filed its second Indian suit, C.S. (O.S) 3193/2012, on grounds that NATCO’s manufacture of glatiramer acetate in India for sale in the US and elsewhere infringed its Indian Patent 190759. Teva admitted that its suit was a quia timet action which was based on the apprehension that NATCO, having tied up with Hyderabad-based Mylan labs for manufacture of the drug and having secured regulatory approval, was bound to use its patented process in India. Reliance was ostensibly placed on The Hindu Business Line article of January 17, 2012 and NATCO’s annual report for 2010-2011 which referred to the tie up between Mylan and NATCO.

If NATCO’s annual report for 2010-11 already disclosed this tie up according to the plaintiff, which is the stated basis for filing of the second suit, why was the suit filed in November 2012, and not earlier? Also, since one of the prayers in the 2007 suit was to restrain NATCO from exporting drugs which infringe the process patent, where was the need to file the second suit again seeking a cognate prayer with respect to the same patent?

From Para 8 of the decision, it also appears that the second Indian suit was filed on the basis of the US District Court’s finding of infringement of process claims of the US patents, and parity was sought to be drawn between the US patents and the Indian patent 190759. In other words, according to the plaintiff, since the US District Court had come to the conclusion of infringement of process claims of the US patents by the defendants, the Indian Court had to apply the US District Court's findings to the corresponding Indian patent as well..... To me, this goes against the very grain of territoriality of patent rights. After all, every national Court has the right to come to a different conclusion with respect to infringement based on national standards.

Also, if the US Federal Court had ultimately invalidated the US process claims, wouldn’t it have a bearing on the maintainability of the 2012 Indian suit given that the plaintiff’s prayers in the suit were based on the findings of the US District Court which were no longer valid? If yes, why did the plaintiff not deem it fit to bring the US Federal Court's decision to the Delhi High Court's attention?...

Anyways, on the issue of jurisdiction, according to the plaintiff:
A.      The defendants had secured regulatory approval for glatiramer acetate; 
B.      They had distribution networks in New Delhi;
C.      Glatiramer acetate was being sold in New delhi by the defendants

Consequently, the plaintiff invited the Court to assume that glatiramer acetate being sold in New Delhi was manufactured using the plaintiff’s patented process. The question that comes to my mind is, if the patent is admittedly over the process, is it sufficient for a patentee to institute a suit for infringement of the process patent in Delhi merely on the basis of the above ingredients?

Importantly, the plaintiff's product patent application on glatiramer acetate, 93/Del/2003, was rejected by the Indian Patent Office in March 2009. In light of this, doesn’t the 2012 suit have the effect of circumventing the rejection of the product patent application since the suit was based on a mere assumption that the product being sold was manufactured using the patented process? Doesn’t the plaintiff have the burden of proving that the patented process was being worked within the territory of Delhi, particularly when the act of manufacturing took place in Hyderabad according to the defendant?

The plaintiff also claimed that two processes were used by the defendants to manufacture the drug. Here’s the extract from the plaintiff’s reply to the 7/10 application on its stance with respect to the two processes allegedly employed by the defendants:

The Defendants have two different Glatiramer Acetate (GA) products – one for sale within India and the other for export to Mylan, and are using two different manufacturing processes to make these products. The Defendants admit this in paragraph 5 of their Written Statement as well as in the affidavit dated 6th July 2013 filed by Dr. AKS Bhujanga Rao. This suit does not concern the process used by Defendants for making the Glatiramer Acetate product sold by them for the Indian market (hereinafter referred to as the “GA-first product”). The present suit concerns the process for making the Glatiramer Acetate product that the Defendants are manufacturing in India on behalf of Mylan for sale outside India (hereinafter referred to as a “GA-second product”). This submission is without prejudice to the Plaintiffs’ reasonable apprehension that the Defendants might also be selling the “GA-second product” in India including New Delhi....

....Therefore, the cause of action in suit CS (OS) No. 1708 of 2007 is different from that of CS (OS) No. 3193 of 2012 and also the prayers contained therein are clearly distinct. As explained above, the earlier suit pertained to the GA – first product, sold in India, and the present suit pertains to the separate and distinct GA - second product made in India for export to the US and other countries. This necessitated the filing of the present suit.”

However, nowhere in the Plaint was it alleged that the process was being used by the defendants within the Delhi High Court’s jurisdiction. It wasn’t even alleged that the plaintiff apprehended the use of the patented process in New Delhi. It is worthwhile to note here that NATCO had categorically denied the use of the patented process within the Court’s jurisdiction, and had also denied export of the drugs from New Delhi. In light of this categorical rebuttal, which reportedly was never countered by the plaintiff, there was not enough material for the Delhi High Court to entertain the suit.

Following are the relevant observations of the Court:

22. At the outset, it must be stated that it was repeatedly stressed by learned Senior counsel for the Plaintiffs that CS (OS) No. 3193 of 2012 is a quia timet action. Only an apprehension has been expressed that Natco, having tied up with Mylan, is likely to export the infringing Copolymer-I to US and other countries....

28. It is, therefore, clear that the case of the Plaintiffs concerns the infringement of the process involved in the GA-second product, which the Plaintiffs term as the ‘Mylan process’ and about the possible infringement for the purposes of ‘export’ of the said product to the US and elsewhere.

30. In light of the above legal position, the averments in the plaint in the instant case would have to be examined to ascertain if there is any specific plea that there is a violation of the process patent within the jurisdiction of this Court. The Court finds that there is no such specific averment. There is no averment that the process patent i.e. Indian patent No.190759, or for that matter the ‘Mylan process’, is being practised/infringed by Natco within the jurisdiction of this Court. 

This has also to be seen in the context of the fact that there is no denial by the Plaintiffs that there is no manufacture of the GA- second product in Delhi. There is also no denial by the Plaintiffs that Natco has at present its manufacturing facilities only in Hyderabad.

31. Since the suit concerns a process patent, the pleadings as regards the product being sold in Delhi or elsewhere, or the possibility of it being launched in Delhi or elsewhere cannot justify the jurisdiction of this Court. To recapitulate, in para 40 of the plaint it is averred that “The US Court decision leads to an incontrovertible conclusion of infringement of rights of Plaintiffs No. 1 and 2 in IN ‘759 based on the manufacture of glatiramer acetate by Defendant No.2 for export and sale in the United States.” 

In para 41 it is stated that Natco’s act of manufacturing the glatiramer acetate product “for sale in the US and elsewhere” amounts to infringement of the process patent. The averment is not that such manufacturing of the product for export to the US and elsewhere is happening or is apprehended to happen within Delhi. In the circumstances, the invocation of Section 48(b) of the Patents Act 1970 by the Plaintiffs to urge that the product obtained as a result of infringement of process is sold or apprehended to be sold in Delhi appears to be misconceived. 

The fact that Natco may have an office in Delhi or a distributor in Delhi is not relevant given the fact that the subject matter of the suit is a process patent, and the action brought forth is for alleged infringement of that process for the purposes of export to the US and elsewhere.

Breaking News: Delhi High Court Returns Teva Pharma’s Suit for Patent Infringement against NATCO for Want of Jurisdiction

Based on information from reliable sources, it is learnt that the Delhi High Court has today returned Teva Pharmaceutical’s plaint in its suit for infringement of the process to manufacture the multiple sclerosis drug Copaxone  against NATCO Pharma (C.S.(O.S) 3193/2012). The plaint was returned by Hon’ble Justice S.Muralidhar for want of jurisdiction under Order 7 Rule 10 of the Code of Civil Procedure, 1908, considering that NATCO is a Hyderabad-based entity.

Reproduced below is the said provision of the CPC:

10. Return of plaint.- (1) Subject to the provisions of rule 10A, the plaint shall at any stage of the suit be returned to be presented to the court in which the suit should have been instituted.

Explanation: For the removal of doubts, it is hereby declared that a court of appeal or revision may direct, after setting aside the decree passed in a suit, the return of the plaint, under this sub-rule.

(2) Procedure on returning —On returning a plaint, the Judge shall endorse thereon the date of its presentation and return, the name of the party presenting it, and a brief statement of the reasons for returning it.

Late last year, NATCO had won the right to introduce the generic version of Copaxone in the US.  We will undertake a detailed analysis of the Delhi HC’s decision as soon as we have a copy of it. I thank the blog's well-wishers for bringing this development to my attention.

Thursday, February 27, 2014

Delhi High Court declares “Brahmos” as a Well-known Mark and restrains FIIT JEE from using it

On February 24, 2014, in a 32-page decision delivered in a suit for trademark infringement instituted by Brahmos Aerospace Private Limited against FIIT JEE limited, the Delhi High Court declared the plaintiff’s mark “BRAHMOS” as well-known and granted an interim injunction restraining the defendant from using the trademark BRAHMOS in relation to educational activities or as part of its domain name and in any manner which could cause confusion and deception.

As most of our readers must be aware, the plaintiff is a joint venture between the Defence Research and Development Organization (DRDO) of India and the Federal State Unitary Enterprise of Russia, with DRDO being the majority shareholder. The plaintiff is popularly known as the manufacturer of the world’s fastest supersonic cruise missile, Brahmos.

The first defendant is a popular private institution which coaches students who aspire to successfully crack the Joint Entrance Examination (JEE) conducted by the prestigious Indian Institutes of Technology (IITs). The second defendant is USA University Quest (UUQ) which partners with the FIIT JEE to help Indian students secure admissions to US universities.

It was the plaintiff’s case that its well-known trademark BRAHMOS was being used by the defendants in connection with their aptitude tests, which had led to actual confusion. Further, according to the plaintiff, the mark BRAHMOS was being used by the plaintiff in connection with its training and education programmes as well. Consequently, according to it, the likelihood of confusion was higher. To this end, the plaintiff cited instances wherein it had received queries from students asking if taking the Brahmos aptitude test of the defendants would improve their chances of securing employment with the plaintiff.

The defendants contended that:
A.       the mark BRAHMOS was not being used as a trademark, but was used only to indicate a connection in the course of trade. Further, FIIT JEE continued to be used by the first defendant as its flagship trademark, and BRAHMOS was being used only in connection with one of the several aptitude tests conducted by it.
B.      the plaintiff and the defendants were in entirely different spheres of activity. Consequently, there was no possibility of confusion and deception and that the use was bonafide.
C.      BRAHMOS was not a distinctive mark since terms such as “Brahmo Samaj” have been in vogue for a long time.
D.      the Plaintiff was using Brahmand and not Brahmos, for its training programmes. Therefore, there could be no confusion/deception in the field of education/training.

The Court took the view that the trademark BRAHMOS was not a dictionary word, but a coined word, a portmanteau formed from the names of the rivers Brahmaputra and Moskva.

Citing the decisions in Bloomberg Finance LP vs. Prafull Saklecha & Ors and Rolex Sa vs. Alex Jewellery Pvt. Ltd. and Ors, the Court relied upon Section 29(4) to conclude that the mark BRAHMOS was well-known and that the defendants’ use of the mark was “without due cause”/valid justification. The Court rejected the defendants’ contention that their use of the mark was not in a trademark sense given that it was being used in the course of trade. Consequently, the defendants were restrained from the using the mark in any manner which could cause confusion/deception.

It is to be noted that sub-sections (1)-(4) of Section 29 do not require the mark to be used as the flagship mark for it to be infringing. Only Section 29(5) deals with use of the mark as a trade name, or part of the trade name, or as the name of his concern or a part thereof by the defendant in respect of identical goods or services. However, "use in the course of trade" being broader in scope, includes use of the mark as a tradename or as part of the tradename or business concern by the defendant.