Karnataka High Court Gives Safe Landing To Mark “Vistara” For Tata Sia Airlines

In a recent trademark tussle between Vistara Voyages and TATA SIA Airlines concerning the trademark VISTARA, the Karnataka High Court granted relief to TATA SIA Airlines based on jurisdictional issue of filing suit under Section 134 of the Trademark Act in Bengaluru.

Facts of the case:

1.  Vistara Voyages (India) Pvt. Ltd. (hereinafter referred to as the Respondent/ Plaintiff) having its head office in Karnataka, Bengaluru is a travel management company, delivering travelling solutions to its clients.
2. In January 2015, a joint venture of TATA Sons and Singapore Airlines namely M/S TATA SIA Airlines Limited (hereinafter referred to as the Petitioner/ Defendant) launched its airlines in India under the brand name VISTARA;
3. Aggrieved by the adoption of an identical trademark, the Respondent initially filed a suit before the District Judge, Bengaluru for issue of an injunction restraining the Petitioner from using the mark “VISTARA” and claimed damages of Rupees 1 Crore from the Petitioner;

Brief Facts and Findings of the Trial Court

In response to the aforesaid suit filed by the Respondent (Plaintiff), the Petitioner (Defendant) filed an application for rejection of the plaint or return of the plaint for being presented before the Jurisdictional Court on the following grounds:

• That the suit is liable to be dismissed for lack of jurisdiction as the Petitioner (Defendant) was not carrying any business in India;
• That Section 134 of the Trademark Act, 1999 (the Act) does not apply to unregistered trademarks;

Finding of the Trial Court

The Court dismissed the application filed by the Petitioner (Defendant) for rejection of the plaint on the following grounds:

1. That the certificate issued by the Joint Director, District Industrial Centre, Bengaluru indicates that Respondent (Plaintiff) has been permitted to do the activity of travel and forex in Bengaluru and Plaintiff (Respondent) is having an office at Bengaluru;
2. That there is no record placed by the Petitioner (Defendant) to indicate that the Government of India has permitted it to carryout business only in Delhi;
3. That the permission to provide Airport and allied services to domestic passengers includes the entire territory of India;

Aggrieved by the aforesaid order to the Trial Court, the Petitioner (Defendant) filed a writ petition before the Karnataka High Court for quashing of the impugned order.

Contentions forwarded by the Petitioner (Defendant):

1. That no cause of action has arisen within the jurisdiction of this Hon’ble Court and as such the suit was not maintainable before The Civil Court, Bengaluru;
2. That Section 134(1) (4) of Trade Marks Act, 1999 requires that in a suit for passing off the Petitioner (Defendant)  shall be carrying on business at the place of suing and when no cause of action had arisen within the jurisdiction of Civil Court, Bengaluru, suit under the said provision was not maintainable; 
3. That the right flowing from Section 134 (1) (a) & (b) of the Act would be available only to a registered proprietor or registered user and in the present case Respondent’s (Plaintiff) mark Vistara is still pending at the Registry;

Contentions forwarded by the Respondent (Plaintiff):

1. That even if a small part of cause of action accrues the Court will have jurisdiction and cause of action being a bundle of facts would entitle the party to maintain a suit;
2. That in this age of advanced technology people would read newspapers and magazines via internet and the Petitioner’s (Defendant) website which is accessible across the globe entitles the Respondent (Plaintiff) to maintain a suit at Bengaluru;
3. That it is the prior user of the mark VISTARA, as it has been in the business of travel and travel related services since 2008 and has been trading under the mark “Vistara Voyages” and “Vistara”;
4. That on account of being widely publicized, its mark Vistara has acquired a distinctive feature;

That the Petitioner’s (Defendant) use of an identical and similar mark Vistara is bound to create confusion and deception among public who are looking to avail similar set of services;

Observation and Decision of the Hon’ble Court:

In view of the facts and circumstances the Court made its observations and findings on the following issue:

Whether in the present case, the Respondent would be entitled to maintain suit despite the bar prescribed under clauses (a) to (c) of Section 134(1) of the Act?

1. That a plain reading of Section 134 indicates that in an action for infringement of a registered trademark or relating to any right in a registered trademark as the place for suing would be a District Court having jurisdiction and includes the jurisdiction of the Court where the person instituting the suit or proceeding actually and voluntarily resides or carries on business or personally works for gain;
2. The Court also referred to the decision of the Apex Court in the case of K. Narayanan & Ors. v. S. Murali (AIR 2008 SC 3216), wherein the Court held that in order to maintain a suit for infringement of a registered trademark, it would be the District Court where Respondent (Plaintiff) resides or carries on business as indicated under Section 134(2) of the Act. Hence, as on the date of filing of the suit if there is no infringement of a registered trademark it cannot be said that cause of action would be available to file a suit in the District Court where Respondent (Plaintiff) carries on business and such suit would be maintainable;
3. That the Respondent’s (Plaintiff) case would not even fall under Section 134 (1)(c) of the Act to enable the Respondent (Plaintiff) to institute the suit at Civil Court, Bengaluru. Further, the Petitioner (Defendant) is undisputedly having its office at Delhi and has not yet commenced its business operations at Bengaluru and as such the suit in question instituted at Bengaluru ought to be held as premature;
4. That the Petitioner (Defendant) does not reside at Bengaluru, no business is carried at Bengaluru, and no branch of Petitioner (Defendant) is located at Bengaluru. Since, Defendant has not commenced its operations at Bengaluru it cannot be said by Respondent (Plaintiff) that there would be confusion in the mind of public or travelers about the services of the Plaintiff and Defendant being deceptively similar;

In view of the aforesaid, the Court set aside the impugned order of the Trial Court.

The Judgement can be accessed by clicking here

Conclusion:

Jurisdiction constitutes an essential ingredient to claim relief and if the correct forum is not chosen then however reasonable is the claim of the Party it would not be heard adequately as he has not approached the correct forum.

Another point to take home from this judgement is that a registered trade mark gives certain advantages to the proprietor which cannot be claimed when an application is pending, this means that prior use though taken into consideration, the advantages of a registered trade mark are far beyond.

Source of news can be accessed by clicking here

Indian Patent Office refuses to grant Abraxis’ patent on anti-cancer drug ‘Abraxane’ after pre-grant opposition by Natco

                                                

Image source: http://www.pharmafile.com/news/181988/cancer-treatment-abraxane-gets-eu-nod

Date of decision- June 01, 2015

Applicant- M/s Abraxis Bioscience, LLC, USA

Opponent- Natco Pharma Limited, Hyderabad

IN THIS ISSUE

The Assistant Controller of Patents & Designs, on June 01, 2015, refused to grant patent application pertaining to a new composition for Paclitaxel, an anti-cancer drug marketed under the trade name Abraxane by Abraxis, citing lack of novelty and inventive step, in response to a Pre-grant opposition filed by Natco.

The application for Abraxane formulation was refused since it lacks inventive step, and violates Section 3 (d) of the Indian Patents Act -- a provision under which Novartis lost the patent on its blockbuster cancer drug, Glivec in 2013. Section 3(d) - an important safeguard in the patent law specifically applicable for pharma and chemical industries, prohibits grant of patents to new forms of known substances, unless the new form results in enhanced efficacy over the known substance. 

FACTS

The Applicant had filed Indian Application No.4572/CHENP/2006 on December 14, 2006 entitled ‘Treatment methods utilizing albumin-binding proteins as targets’. The patent application pertains to Abraxane, a composition of paclitaxel coupled to an anti-SPARC antibody with a pharmaceutically acceptable carrier.

The Opponent filed a Pre-grant opposition on September 8, 2008 under section 25(1) of the Indian Patents Act and presented the following arguments: 

OPPONENT’S CONTENTIONS

Obviousness/Lack of Inventive Step (section 25 (1) (e))

     The Opponent submitted that the following features of the present invention are already known in the art and hence the invention lacks inventive step, based on the cited documents:

1. Composition free of cremophor
2. Use of paclitaxel- antibody therapy for targeted, selective delivery and better cytotoxicity;
3. SPARC is a potential marker for such targeted delivery;
4. Affinity of SPARC to bind with albumin;

Section 3(d) and Section 3(e)

The Opponent contented that the present composition is a combination of known substances, namely paclitaxel and anti-SPARC antibody. There is no demonstration of efficacy and thus it fails to qualify as a patentable invention under Section 3(d). Such composition claimed in the impugned application is a mere admixture and not patentable under Section 3(e) of the Act.

APPLICANT’S CONTENTIONS

The Applicant contended that an anti-SPARC antibody is not taught in the prior art. The Applicant argued that Section 3(d) objection is irrelevant for the claims of the instant invention.

CONTROLLER’S DECISION

In light of the above findings, the Assistant Controller, agreeing with the Opponent’s contentions, concluded that the claimed composition is obvious to a person skilled in the art in view of the disclosures cited by the Opponent. The present composition is a combination of known substances, namely paclitaxel and anti-SPARC antibody. The Applicant failed to demonstrate efficacy and thus it fails to qualify as a patentable invention under Section 3(d), hence the application for grant of a patent was refused under section 15 of the Patents Act, 1970.

The Controller’s decision can be accessed on the below link: 

http://ipindiaservices.gov.in/decision/4572-CHENP-2006-10560/4572-chenp-2006%20order-Final.pdf

The European Parliament maintain ‘Status Quo’ of Freedom of Panorama

According to the European Union Parliament Press Release dated June 16, 2015, a Draft Report was to be tabled to discuss whether permission should be obtained from the copyright holder to commercially use images or videos of monuments and sculptures in Europe. Our previous newsletter, titled “New EU Law, A Midsummer Nightmare?” (available here) discussed the issue of Freedom of Panorama in Europe.

Latest Development

On July 9, 2015, European parliament by a non-legislative resolution conclusively rejected the suggestion to limit the right to freely photograph public space. The non-binding resolutions, which assesses the implementation of the key aspects of EU copyright law ahead of upcoming Commission proposal to modernize it, was passed by 445 votes to 65, with 32 abstentions.

The EU parliament decisively removed the controversial proposal to restrict the so-called Freedom of Panorama, the right to use pictures of public buildings and sculptures without restriction, which had previously been inserted by the Legal Affairs Committee.

The EU Parliament Press Release titled “Copyright reform: promote cultural diversity and ensure access to it, say MEPs” was issued soon after the voting on July 9, 2015. The news reads “Concerning the right to create and publish images and photographs of public buildings and art works, MEPs prefer to retain the current situation by rejecting the proposal in the draft resolution that commercial use of such images should require authorisation from the right-holders. Under current EU copyright law, it is possible for member states to insert or not to insert a so-called freedom of panorama clause in their copyright legislation.”

The Next Move

The Parliament is believed to table a proposal by the end of 2015 to modernize EU copyright law to make it fit for the digital age.

Parliament wishes to bring a single European copyright title that would cover the whole of the territory of the EU; review the existing exceptions to copyright laws to better adapt them to the digital environment and examine the application of minimum standards and ensure fair and appropriate remuneration for all categories of right-holders, including with regard to digital distribution of their works, and improve the contractual position of authors and performers in relation to other right-holders and intermediaries.

References

1. http://www.europarl.europa.eu/news/en/news-room/content/20150703IPR73903/html/Copyright-reform-promote-cultural-diversity-and-ensure-access-to-it-say-MEPs
2. http://www.greens-efa.eu/copyright-14332.html
3. https://juliareda.eu/2015/07/eu-parliament-defends-freedom-of-panorama-calls-for-copyright-reform/

'CREATIO' TM, The Fourth Annual Design Competition- Announcement of Winners

As announced earlier, Vidya Darshan Charitable Trust in collaboration with S.S. Rana & Co. organized 'CREATIO' TM (the fourth annual design competition) on the occasion of World Industrial Design Day on June 29, 2015.  Several entries were received from young creators from all over India who took the initiative to create new designs and exhibit their talent through this platform.

Out of the various entries received for the Competition, the two most innovative designs as per our Judge’s panel were as follows:

Winner- 3D Table Clock designed by Mr. Vivek

First Runner Up- Mobile-cum-Pen Stand designed by Mr. Aquiv Hasan   

Our hearty congratulations to the winners and participants of the Competition…!!!

The Prize money and participation certificates are being forwarded to them.

Compulsory License Application filed against AstraZeneca’s "SAXAGLIPTIN"

On June 25, 2015, Lee Pharma Limited has filed an application for the grant of Compulsory License (CL) with Indian Patent Office, Mumbai for manufacturing and selling of the product (compound) called "SAXAGLIPTIN" in India. The product is marketed and sold in India by AstraZeneca AB. It is a dipeptidyl peptidase-4 (DPP4) inhibitor prescribed for the treatment of Type-II diabetes mellitus. 

Lee Pharma Limited is a Hyderabad based company, incorporated in the year 1997 and is involved in research and development, production, distribution, sales, marketing and export of pharmaceutical products, pharmaceutical formulations, intermediates and APIs.

Saxagliptin is protected by Indian Patent No. 206543 titled "A CYCLOPROPYL-FUSED PYRROLIDINE-BASED COMPOUND" which was granted on April 30, 2007 to M/S Bristol-Mayers Squibb Company. It was then transferred/assigned to AstraZeneca AB.

Currently, Saxagliptin is being sold in tablet dosage form as a single active agent under the brand name "ONGLYZA" (strengths 2.5 mg and 5 mg) and also in combination with Metformin under the brand name "KOMBIGLYZE XR" (strengths 5/500 mg and 5/1000 mg). Their current price in India are as shown in below table-

S. No	Brand	Cost per strip	Cost per tablet	Monthly cost
1	ONGLYZA (2.5 mg)	Rs. 605 (14 tablets)	Rs. 43.211	Rs. 1296.42
2	ONGLYZA (5 mg)	Rs. 581 (14 tablets)	Rs. 41.5	Rs. 1245
3	KOMBIGLYZE XR (5/500 and 5/1000 mg)	Rs. 343 (7 tablets)	Rs. 49	Rs. 1470

In its CL application, Lee Pharma stated that it has made sincere efforts to obtain a license and received no response in regard to the same from the patentee. Now Lee Pharma has filed a CL application against AstraZeneca on the following grounds of Section 84 of the Indian Patents Act, namely:-

1. That the reasonable requirements of the public with respect to the patented invention have not been satisfied;
2. That the patented invention is not available to the public at a reasonably affordable price; and    
3. That the patented invention is not worked in the territory of India.

Lee Pharma alleged that: 

1. Even after eight years of grant of patent, Saxagliptin is not been manufactured by the  Bristol-Mayers Squibb or AstraZeneca within the territory of India
2. Saxagliptin and Saxagliptin + Metformin combination is imported in India at a cost as low as less than one Rupee per tablet;
3. However, the same tablet is sold to Indian patients at a price as high as Rs. 41-45 per tablet;
4. Quantity of the imported tablets is too less to meet the requirements of Indian Patients suffering from Type-II Diabetes Mellitus;
5. Whereas, the import of the tablets in India itself is too less to meet the Indian requirements, a majority of the imported medicine is again being exported back to foreign countries making this medicine virtually unavailable to Indian patients.

Further, Lee Pharma proposed the following cost for the said product if CL is granted:

S. No	Product	Strength	Cost per strip (14 tablets)	Cost per tablet
1	Saxagliptin	2.5 mg	Rs. 378	Rs. 27
2	Saxagliptin	5 mg	Rs. 406	Rs. 29
3	Saxagliptin + Metformin XR	5/500 mg	Rs. 210	Rs. 30
4	Saxagliptin + Metformin XR	5/ 1000 mg	Rs. 220.50	Rs. 31.50

To access the CL application, please click here:

http://ssrana.in/News/News%20header/Images/2015-06-25-Application-for-CL-Lee-Pharma-Limited.pdf

Tussle of e-Tailers: Westland drags Flipkart to Court

The Recent Fiasco

In a recent battle between Amazon and Flipkart, Westland Ltd. (the Tata Group-owned publisher of the `Scion of Ikshvaku’- hereinafter referred to as the Plaintiff) has dragged Flipkart to Delhi High Court, alleging Copyright and IT (Information Technology) Act violation with reference to its tie-up with Amazon for exclusive online sale of Amish Tripathi’s ‘Scion of Ikshvaku’.

The Plaintiff has stated that it had entered into a two-month exclusive deal with Amazon to sell the aforesaid book through its online platform. However, the Plaintiff claimed that Flipkart is selling the impugned book on its website which attracted the provisions relating to Copyright infringement and violations under the Information Technology Act.

The matter at present is sub judice before the Delhi High Court and in its last hearing on June 30, the Court has not made any restraint order against Flipkart and has granted two weeks’ time to Flipkart for filing their Written Statements in the case.

Ghost from the Past

This is not the first time that such a suit has emanated before the Court. A similar dispute between Flipkart and Amazon had emerged in 2014, wherein exclusive sale agreement was entered between Flipkart and Rupa Publications for the online sale of Chetan Bhagat’s Half Girlfriend. In the case of Mr. Mohit Manglani v. M/s Flipkart India Private Ltd. and Ors. (C. No.80 of 2014), Mohit Manglani had by referring to the exclusive sale agreement between Rupa Publications and Flipkart for sale of the book Half Girlfriend, alleged such practices as restrictive and unfair trade practices by e-portals. However, the CCI (Competition Commission of India) ruled in favour of the e-commerce and stated that such exclusive selling agreements do not violate the appreciable adverse effect on competition (AAEC), a requirement for alleging unfair trade practices under the Competition Act, 2002. The Commission further remarked that “It does not seem that such arrangements create any entry barrier for new entrants. It seems very unlikely that an exclusive arrangement between a manufacturer and an e-portal will create any entry barrier as most of the products which are illustrated in the information to be sold through exclusive e-partners (OPs) face competitive constraints,”

Exclusive Selling Agreements and the Competition Act, 2002

In the light of the recent case, it would be relevant to look into the provisions of the Competition Act, 2002, which defines Exclusive Supply Agreement as “any agreement restricting in any manner the purchaser in the course of his trade from acquiring or otherwise dealing in any goods other than those of the seller or any other person”.

According to the Act, exclusive supply agreements under Section 3 are prevented, if the following pre-requisites are satisfied.

i.                    That the enterprise is in a dominant position;

ii.                  If it is in a dominant position then it has abused its dominant position;

iii.                That the exclusive supply agreement will have an appreciable adverse effect on competition (AAEC) within India;

The Act under Section 19(3) further enunciates that the Commission shall determining whether an   agreement has an appreciable adverse effect on competition (AAEC) shall have due regard to all or any of the following factors, namely:

a) Creation of barriers to new entrants in the market;

b) Driving existing competitors out of the market;

c) Foreclosure of competition by hindering entry into the market;

d) Accrual of benefits to consumers;

e) Improvements in production or distribution of goods or provision of services; and

f) Promotion of technical, scientific and economic development by means of production or distribution of goods or provision of services to assess the effect of such exclusive arrangement between manufacturers and e-portals;

Thus, while analyzing exclusive supply agreements and their validity, the provisions under the Competition Act are relevant as well.

Traditional Brick and Mortar Retailers- A Consistent Adversary of E-commerce Sector

A different facet of this competition involves a fight between the E-commerce sector and the ‘brick and mortar’ retailers.

Retailers like Starmark, Crossword etc. have in the past raised issue based on alleged unfair trade practices and abuse of dominant position with reference to India’s President Shree Pranab Mukherjee’s book “The Dramatic Decade: The Indira Gandhi Years”, where a complaint was filed against Rupa Publication for granting exclusive right of selling the book to Amazon. The issue was raised before the Commerce Minister Nirmala Sitharaman, with the Confederation of All India Traders (CAIT) requesting the Minister to intervene in the matter.

Conclusion

Since, the advent of E-commerce sector in India, various legal fights have been initiated against the E-commerce portals, sometimes involving jurisdictional issues and sometimes trademark related issues. The decisions rendered by the Judiciary and quasi-judicial authorities in such cases is enabling the regulation of law governing the legal issues involved in online sale.

Misuse of Trademark on Websites

No Dil ki deal between Snapdeal and Nalli!

                                                  

Since the advent of online shopping in India, instances of alleged misuse of trademarks on or by E-commerce portals have been often cited and the recent news of the Saree pioneer Nalli Silk Saree (hereinafter referred to as Nalli Sarees) initiating legal action against snapdeal.com for trademark infringement has been making rounds.

Nalli Silk Sarees was established in 1928 and since then has been selling silk sarees, suits and other fashion accessories under the brand name NALLI. Nalli sarees has outlets in some of the major cities of India like Chennai, Delhi, Mumbai, Bangalore, Hyderabad and Ahmedabad. Nalli Sarees apart from having physical outlets also sells its products online exclusively through its website www.nalli.com. On the other hand, Snapdeal is a well- known Indian online market place which sells and markets wide range of products all over the country through the website www.snapdeal.com.

Recently, Indian Daily, Economic Times has reported that Nalli sarees has issued a cease and desist notice against Snapdeal for allegedly using its trademark NALLI as a search word and also copying images from Nalli’s website and using those images for advertising their sale offer on silk sarees on www.snapdeal.com.

Nalli Sarees has further alleged that Snapdeal has deliberately indulged in such an activity with the motive to unjustly enrich itself by deceiving the public and making the public assume that the original "Nalli" silk sarees were available on Snapdeal’s website.

Reportedly, pursuant to the aforesaid action, Snapdeal has removed all tags, metatags and any word, image or mark that would infringe the trade mark “NALLI” and in this regard a Snapdeal spokespersons stated, "Snapdeal.com is an online marketplace which connects buyers and sellers to provide the widest assortment of products. We have received the notice from the company and will take appropriate actions as per law."