Same trade channel for allied / cognate goods bound to create confusion

In a recent decision rendered by the Calcutta High Court in the case of Assam Roofing Ltd. & Anr. vs. JSB Cement LLP & Anr., G.A. No.1412 of 2015, C.S. No.106 of 2015, the Court made an in-depth analysis of use of deceptively similar marks and use of cognate/ allied goods falling in the same class. The case is an interesting one as it ruled on the aspect of infringement in cases where two similar marks were being used with respect to cognate goods falling in the same class.

Brief Facts

Assam Roofing Ltd. (hereinafter referred to as “the Plaintiff”) filed the instant suit seeking relief of injunction against JSB Cement LLP & Anr. (hereinafter referred to as “the Defendant”) on account of infringement and passing off of its trade mark “RHINO”.

The Plaintiff, established in 1972, is engaged in the business of manufacturing galvanized iron sheets, asbestos, cement sheet and roofing accessories.

Contentions raised by the Plaintiffs

1. The Plaintiffs started their asbestos unit in 1977 and sale of asbestos sheets under the mark “RHINO” in colour scheme of red, black and white which was adopted in 1998, and by virtue of continuous and extensive use of the mark since then, the same has become a well-known trade mark and has acquired secondary significance.
2. That sale of products under the mark “RHINO” is around INR 3.95 Billion (Approx. USD 59.17 Million*) per annum and it has spent large amounts on advertisements and publicity of its mark.
3. The colour scheme and pictorial presentation of the mark “RHINO” are identifiable with the Plaintiffs and their products only.
4. The Plaintiff No. 1 has obtained registration over the mark “RHINO”, “RHINO” labels and the device of “RHINO” in Classes 6 and 19, the first of such registration dating back to October, 10, 1977. 
5. Use of the mark “RHINO” in cognate and/ or allied goods would indicate their source of origin from the Plaintiffs only, as the general public associates their products with the Plaintiffs due to long and continuous use of the same by them.
6. Plaintiffs’ grievance- The Plaintiffs in 2015, discovered that the Defendants had recently started marketing and selling cement under the impugned mark “RHINO”.
7. Such use by the Defendants was dishonest as they were not only using the identical mark “RHINO”, but also the device of the Rhino in the same colour scheme.
8. The goods of the Plaintiffs i.e. asbestos sheets and Defendants i.e. cement were cognate and/ or allied goods and were sold through the same trade channels.
9. Such act of the Defendants in using the identical mark “RHINO”, the device of the Rhino that too in an identical colour scheme in relation to cognate goods in Class 19 violated the Plaintiff No. 1’s statutory rights under the Trade Marks Act, 1999 and the Copyright Act, 1957 and also constituted the tort of passing off.
10. The Defendants were aware of the reputation and goodwill earned by the Plaintiffs in their business and hence dishonestly adopted the same trade name “RHINO” with the same colour scheme and device of Rhino with the ulterior motive to deceive the general public.

Contentions raised by the Defendants

1. The Defendants had adopted the trade mark “RHINO” after making diligent searches at the Trade Marks Registry and thereafter commenced use of the said mark on January 1, 2015.
2.  No one could claim any right over the word mark “RHINO” as it was synonymous with the north-east and was a commonly used trade mark in the perspective of business environment in the north-east.
3. The Plaintiffs had not ventured into the business of cements and hence could not claim monopoly on a class of goods for which no intention to use was shown.
4. Cement goods and asbestos fibres could not be called as cognate goods, and as these were different goods, the allegation of passing off does not hold ground.
5. The Plaintiffs did not hold any registration for the mark “RHINO” for cement, and since Asbestos Sheets and Cement are goods of totally different descriptions, there cannot be any infringement of the trade mark “RHINO” by the Defendants for cement goods.
6. That the colour combination of red, black and white could not be the exclusive property of Plaintiffs, since there were a number of persons having the trade mark for different goods in Class 19 with similar colour combination of red, black and white. Hence, the Plaintiffs cannot have any exclusivity on colour or combination.

Order and Observation of the Court

The Calcutta High Court in this case ruled on several points and referred to a plethora of judgments for substantiating its observation in the case. In view of Plaintiffs’ first use of the mark in the market and other factors discussed below, the Court granted injunction to the Plaintiffs and restrained the Defendants from using the mark “RHINO” for cement goods. The observations of the Court are discussed in brief below:

1. On use of deceptively similar mark

The Court ruled that if a word forming part of a mark has come into use in trade to identify the goods of the owner of the mark, then it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, simply as confusion is likely to result. The Court referred to the words of Lord Cranworth L.C., in Seixo v. Provezende (1866 LR 1 Ch. 192), wherein he remarked that 'If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think that the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market, may be as much a violation of the rights of that rival as the actual copy of his device.’

The Court further observed that the essential features of the Plaintiffs’ mark have been adopted by the Defendants.

1. On use of cognate/ allied goods falling in similar class

That physical or chemical attributes of the goods were not relevant to determine whether the goods fall in the same class or would fall in the same description. The test in such cases has to be- what is the trade channel through which the goods reach the consumer and which is the class of consumers purchasing the goods.

The Court further opined that the classification of goods and services adopted by the Registry or the International Classification was not the determining or guiding factor for ascertaining similarity of goods/ service. The classification system is an administrative framework to facilitate search for conflicting marks and examination by the Trade Marks Registry. The Court referred to the Australian Wine Importers TM case [(1889) 6 RPC 311], wherein the Court observed that "if you come to look at the classification, you will find goods of the same description in one sense in different classes, and you will find goods of different descriptions in the same class.”

With reference to the case at this point, the Court was of the view that although cement could be an ingredient for manufacturing of asbestos and cement sheet, the goods are not similar. However, both asbestos and cement were used for building purposes and were likely to be sold through the same trade channel.

Concluding Remarks

In the instant case, it cannot be denied that the Plaintiffs were using the impugned mark since 1977, whereas the Defendants started using a similar mark with respect to alleged allied goods in 2015. In such case of long and extensive use by the Plaintiffs, the Plaintiffs’ goodwill and reputation earned in the mark could not be overlooked. Moreover, use of an established mark in respect of cognate goods i.e. asbestos and cement which were being sold through the same trade channel further aggravated the possibility of confusion in the case, thereby impending the grant of injunction.

*@ 1 USD = 66.76 INR

Delhi High Court Allows Amendment of Suit Valuation from INR 2.1 Million to INR 10 Million!!

The Delhi High Court, on December 16, 2015 has rendered a judgment in Eicher Motors Limited v. Saurabh Katar & Ors., (CS(OS) 2998/2015), allowing an amendment in the plaint enhancing the suit value from INR 2.1 Million To 10 Million.

Brief Facts/ Background: 

• The Plaintiff is stated to be the owner of certain registered and unregistered trademarks such as “Royal Enfield:, “Bullet”, “Bullet 500”, “Bullet 350”, “Enfield”, “Made Like a Gun”, “ Thunderbird”, “Royal Enfield Continental GT”, and it came to the notice of the Plaintiff that Defendant Nos. 1 and 2 are engaged in the unauthorized display, offer for sale and sale of certain counterfeit products including fuel tanks, seats, keychains , wallets etc. carrying the Plaintiff’s trademarks/ logo that are identical or deceptively similar to the trademark on the website www.ebay.in hosted by the Defendant No. 3.
• The Plaintiff had filed a suit for permanent and mandatory injunction for restraining the infringement of its trade mark/s and copyright, passing off by the Defendants, rendition of accounts and provision of details of sellers against the Defendants.
• The Plaintiff at the time of filing of the plaint, had valued the damages payable to it as INR 2.1 Million (Approx. USD 31,455*). However, during the pendency of the suit and in course of interaction with the Defendant No. 3, the Plaintiff claims to have come across several other listings on the website of the Defendant No.3 whereby the counterfeit products of the Plaintiff were being sold. Thus, the Plaintiff  filed an application to increase the estimate of damages to INR 10 Million (Approx. USD 149,800*)

Contentions raised by the Plaintiff:

• The Plaintiff is seeking to amend the plaint in order to revise the quantum of damages claimed by it in the suit. The amendment sought does not alter the substance or nature of the suit and the same is also not time barred.
• The Plaintiff cited the following judgements whereby a similar issue was dealt with:
• In Jiva Institute of Vedic Science & Culture & Ors vs. The Indian Hotels Company Ltd. & Anr, CS(OS) 1960/2006, the Plaintiffs at the time of filing of the suit, sought relief of INR 2.5 Million (Approx. USD 37,447*). Later the Plaintiff s submitted that they have re-assessed the damages and filed an application to raise the claim from INR 2.5 Million (Approx. USD 37,447*) to INR 10 Million (Approx. USD 149,800*)
• In Vifor (International) Limited v. The High Court of Delhi (W.P.C.(C) 11035/2015) and  Asian Patent Association (Indian Group) v. Registrar General, Delhi High Court, (W.P.(C) 11043/2015) whereby it was held that “..The cases arising out of the Patents Act, 1870; Trademarks Act, 1999; Designs Act, 2000; Copyright Act, 2000; and The Geographical Indications of Goods (Registration and Protection) Act, 1999, shall not be transferred and in case application seeking amendment in the pecuniary value is filed, they shall be considered by the respective Single Judges in accordance with law.” The Plaintiff submitted that it is the admitted position that while passing the order by the Division Bench in the abovementioned case, liberty was granted to the parties for amendment of pecuniary value.
• In Balar Marketing Pvt. Ltd. v. Lakha Ram Sharma, (2002(97) DLT 424) the Delhi High Court rejected the amendment application stating it to be arbitrary and being not on the basis of cogent material. However, the order was set aside by the Supreme Court of India and the claim was raised from INR 100,000 (Approx. USD 1,500*) to INR 1 Million (Approx. USD 14,980*).
• In Mount Mary Enterprises v. Jivratna Medi Treat Pvt. Ltd. (2015) 4 SCC 182, the suit property was initially valued at INR 1.35 Million (Approx. USD 20,222*). The Plaintiff, thereafter, realized that the market value of the property in question was around INR 12 Million (Approx. USD 179,750*) and therefore, filed an application for amending the plaint accordingly. The application for amendment was rejected by the trial court and thereafter, a writ petition was filed by the Plaintiff challenging the order. The said petition was dismissed and then, the Plaintiff  approached the Supreme Court where the Apex Court of India set aside the impugned order and allowed the amendment application stating that “the amendment application made by the Plaintiff  should have been granted, especially in view of the fact that it was admitted by the Plaintiff  that the suit property was initially undervalued in the plaint and by virtue of the amendment application, the Plaintiff  wanted to correct the error and wanted to place correct market value of the suit property in the plaint.”

Court’s Decision:

The Delhi High Court, in the light of the contentions of the Plaintiff and aforementioned case laws, observed that the requisite conditions for amending the plaint by the Plaintiff were fulfilled in the present case, hence there is no impediment in allowing the application for amendment. The prayer in the application was allowed. The amended plaint along with the application was taken on record.

Concluding remarks:

It is no secret that amending a plaint, especially the value of a suit for the purposes of pecuniary jurisdiction, is not so easy and courts usually are reluctant to allow the same. However, from the above discussion, we can observe a changing trend as even in light of the enhanced jurisdiction of the Delhi High Court (i.e. from INR 2 Million to INR 10 Million), the Delhi High Court is allowing the amendment of the suit value, resulting in the Plaintiffs to succeed in keeping their pending Intellectual Property Rights suits from being transferred to the district courts, provided such amendment fulfills the requisite conditions on the merits of the case.

*@ 1 USD = 66.76 INR

SSR Cricket Team Wins the Suntan Corporate Cup !

S.S. Rana & Co. feels proud to announce that its Cricket Team has won the Suntan Corporate Cup organized over the past couple of months in various cricket gorunds all over New Delhi.

The finals of the said Tournament were held at the Shivaji College grounds on December 20, 2015 between the S.S. Rana & Co. and Aon Hewitt cricket teams, where the SSR Team gave a tough competition to the contending finalist and emerged victorious.

Besides winning the Tournament, Mr. Tanuj Kumar of the SSR team was awarded the Best Batsman award and Mr. Daman Ahuja, also of the SSR team, was bestowed the Man of the Series award.

    

The Football Wave Continue…

SSR Football team semi finalists in CII Soccer Fest !!

The Confederation of Indian Industry (CII) recently organized its 3rd edition of the CII Soccer Festival on December 19 – 20, 2015 at Jawaharlal Nehru Stadium, New Delhi, to create awareness, connect and involve the key influencers for football within the Indian corporate world. A football tournament among various corporates was also organized as part of a myriad of activities.

The event kicked off with a Star Night at the ball Room, Lella Palace, Chanakya puri, New Delhi on December 18, hosted by Mr. Charu Sharma, popular Indian sports commentator, compere and quizmaster, which included a panel discussion as well as interaction with Indian sports icons such as Mr. Baichung Bhutia. Players from various NGO’s were also auctioned who played in the teams along with the corporates.

The event saw participation from 32 teams from various companies and firms, with 5 persons a side.

S.S. Rana & Co. also participated in the grand event and qualified to the semi-finals. Maintaining its streak over the past month, our firm was among the top four teams out of the 32 teams that participated in the tournament.

    

Geographical Indications: an Update

• INTA – Geographical Indications Database

During the Geographical Names Conference organized by the International Trademark Association (INTA) held in Rome on December 10-11, 2015, INTA has launched a new online Member Resource on December 10, 2015.

The searchable online database will be a publication on Geographical Indications, Certification Marks and Collective Marks.

The Geographical Indications (GI) tag distinguish products on the basis of its geographical origins and prevents traders from claiming the attributes of a product which are specific to certain geographies to products produced in other areas. A GI tag grants exclusivity to a ‘community’ as a whole rather than individuals (legal entities), as in the case of trademarks and patents.

The said resource is available online on the website of INTA at http://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspx and is accessible solely to INTA members. The resource is aimed at assisting attorneys in determining the procedure for protecting Geographical Indications, Collective marks and Certifications marks in select jurisdictions, whether under sui generis or other types of laws.

• Basmati Rice – Indo-Pak Collateral Protection for GI Mark

As reported in Financial Express, an English Daily, basmati rice may finally be on its way to getting the much awaited and coveted GI tag and the protection associated with it.

Pakistan has reportedly agreed not to contest India’s move to include basmati, grown in parts of the Indo-Gangetic plain in its GI Registry, with the condition that when Pakistan puts in place a similar IPR (intellectual property rights) platform, it would also get the rice grown in its Punjab province registered under a GI system.

The long grained aromatic rice is produced in the foothills of the Himalayas (Punjab, Haryana, Jammu & Kashmir, Uttar Pradesh, Uttarakhand and Delhi, in India and the Punjab province of Pakistan).

The Intellectual Property Appellate Board, Chennai recently concluded hearing all stakeholders, in respect of the GI tag for basmati rice and is likely to issue a final notification in this regard, shortly. There have been various conflicting claims over the basmati, even within India.

GI recognition in India would result in protection of the tag in other countries including the European Union and the US. Since basmati was not covered under GI protection, many private companies from various jurisdictions have tried to register their products under the title, which is globally considered a high priced premium rice.

On this GI notification becoming a reality, farmers from 77 districts in 7 states in India would benefit. India currently has an 87% share in the global sales of basmati.

In 2013, the Centre had been asked by the GI Registry, whether the State of Madhya Pradesh (MP) could be included in the geographies which traditionally grow basmati. The same was strongly opposed by various stakeholders including, agriculture ministries. The MP government also moved the IPAB in this regard.

The Agricultural and Processed Foods Export Development Authority (APEDA), which operates under the Ministry of Commerce and Industry, subsequently told IPAB that MP’s claim was invalid. Under the Geographical Indications of Goods (Registration and Protection) Act, 1999, APEDA is designated to be the custodian of GI rights for farm produce.

APEDA had applied for exclusive (commercial) use of ‘basmati’ for a grain variety which is grown in the boundaries of the Indo-Gagentic plain, in 2009.

In the past, India and Pakistan also initiated steps to register basmati under GI as ‘joint heritage’ for protecting its premium market abroad, however, the bid was faced with opposition within Pakistan and was not fruitful. 

• Tirur Paan (betel leaves) – GI Protection

As reported in Times of India, an English daily, farmers in and around Tirur, an important business centre in the State of Kerala, have been growing and exporting betel leaves (Tirur Paan), with a spicy aromatic flavor, to Pakistan via Middle East for over half a century.

The market for the said betel leaves is threatened by the exports of betel leaves from Sri Lanka being marketed as Tirur betel leaves in Pakistan. Popular in the Pakistani market as Tirur-Lanka Paan, the name has worked well in the favour of the farmers from Sri Lanka.

"It is our soil, climate, cultivation practices that give the leaves its unique flavour and spiciness which is not found anywhere else in the world. We can continue the vocation only if the product is exported to Pakistan. It is important that we protect our markets in Karachi and Lahore as it is just not viable to grow the crops for the local markets due to the high labour charges. Sadly, the Sri Lankan leaves are gaining upper hand in Pakistan at our cost. We hope that the GI tag would help us protect the heritage and legacy of Tirur Betel leaves in the Pakistan," Beeran Kutty, a farmer in the area, has stated.

The export for the Tirur Paan dropped drastically, also because of the geo-political differences between India and Pakistan, following the demolition of the Babri Masjid and the Kargil War. Sri Lanka filled the void in export of the said betel leaves.

In view of the above difficulties and in an effort to safeguard the rights (claim) of the Tirur farmers in their sole overseas market, the farmers with the help of the Intellectual Property Rights (IPR) Cell of Kerala Agricultural University, are making efforts to have the Tirur Paan leaves gain the GI tag.

Obtaining the GI tag would allow the farmers to enforce their rights overs the geographically attributed product worldwide.

SSR Women Uprising !!

S.S. Rana & Co. feels proud to announce that its Women’s football team has won the ADIDAS Uprising, Delhi Chapter for Women’s Football on December 13, 2015. In keeping with the firm’s Women Empowerment Policy, the Women’s Football match was aimed to promote health and sports among women.

The ADIDAS Uprising saw participation from 2 women’s teams from our firm.

Meanwhile, the Men’s football team of S.S. Rana & Co. was not far behind either, and gave a tough competition to the other teams to reach the quarterfinals of the Men’s Football Tournament.

The Adidas Uprising, Delhi was a congregation of sports lovers, and offered 14 sports – Basketball, Cricket, Football, Running, Badminton, Tennis, Cycling, Training, Yoga, Zumba, Rugby, Skateboarding, Table Tennis and Wall Climbing – over a period of 2 days on December 12-13, 2015. The football games of the ADIDAS Uprising, Delhi was organized at the Plaza Farms, Chhattarpur, New Delhi.

Justice T.S. Thakur Sworn in as 43^rd Chief Justice of India

Justice T.S. Thakur being sworn-in as the 43rd Chief Justice of India by President Pranab Mukherjee at the Rashtrapati Bhawan, in New Delhi on December 03, 2015

Image source: The Hindu

Justice Tirath Singh Thakur was sworn in as the 43rd Chief Justice of India (CJI) on December 03, 2015 by the President of India, Sh. Pranab Mukherjee, at the Rashtrapati Bhavan in New Delhi, India.

Justice Thakur, at 63 years, is the senior-most judge of the Supreme Court of India, and he succeeded Justice H L Dattu who retired on December 02, 2015.

As a Supreme Court judge, he has headed the bench delivering significant verdicts pertaining to reforming the cricket controlling body BCCI in the wake of allegations of betting and spot-fixing scandal in the Indian Premier League, probe into the multi-crore chit fund scam known as Saradha scam, and the multi-million rupee NRHM scam, in which ex-UP minister Babu Singh Kushwaha is also an accused, besides other politicians and bureaucrats, to name a few.

Born on January 04, 1952, CJI Thakur will serve as the CJI for a little over one year and is slated to retire on January 04, 2017.

Earlier, CJI Thakur was appointed as a permanent judge in September 1995 and transferred to the Delhi High Court in July 2004. He was later appointed as acting Chief Justice of the Delhi High Court on April 9, 2008 and on August 11, 2008, he took over as Chief Justice of the Punjab and Haryana High Court. He was elevated as a judge of the Supreme Court and assumed charge on November 17, 2009.k

Delhi High Court stays transfer of pending IPR Cases to Lower Courts

In a recent judgment rendered in the case of Vifor (International) Ltd. v. The High Court of Delhi and Asian Patent Association (Indian Group) v. Registrar General, Delhi High Court, the Delhi High Court has stayed the transfer of pending Intellectual Property Rights cases to the lower courts irrespective of their pecuniary value.

Background

Pursuant to the Delhi High Court (Amendment) Act, 2015 (passed under the assent of the President of India on August 11, 2015), the pecuniary jurisdiction of the Delhi High Court was raised from INR 2 Million (USD 29,960*) to INR 20 Million (USD 299,601*). As a result, all suits valued below INR 20 Million (USD 299,601*) started being transferred to the lower courts for lack of pecuniary jurisdiction of the Delhi High Court. More details on the Delhi High Court (Amendment) Act, 2015 has been covered in our earlier newsletter and can be accessed here.

Thereafter, on October 23, 2015, the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Ordinance, 2015 (hereinafter referred to as ‘Ordinance’) was promulgated and brought into force with immediate effect, under which commercial disputes (including Intellectual Property Rights matters) valued at INR 10 Million (USD 1,49,800*) were to be tried by Commercial Courts/ Commercial Division/ Commercial Appellate Division of the High Courts. More details on the said Ordinance has been covered in our earlier newsletter and can be accessed here.

Consequently, a petition was recently filed before the Hon’ble Delhi High Court seeking stay on the transfer of Intellectual Property Rights cases from the High Court to the lower courts inter alia, on the following grounds –

Contentions and Prayer of the Petitioners in the case

Prayer

In both the subject cases, the Petitioners had a common prayer that cases arising out of the Statutes, namely, the Patents Act, 1970, Trade Marks Act, 1999, Copyright Act, 1957, Designs Act, 2000 and The Geographical Indications of Goods (Registration and Procedure) Act, 1999 of value less than c are not required to be transferred in view of the proviso to Section 7 of the aforesaid Ordinance.

Contentions

1. That as per the various provisions of the aforesaid five Acts, a suit would not lie in any Court inferior to a District Court.
2. That the aforesaid proviso to Section 7 of the Ordinance would show that all suits and applications relating to commercial disputes stipulated by an Act lie in a Court inferior to a District Court, would pertain to the aforesaid Statutes.
3. That in case any suit arising out of the aforesaid five IP Acts has already been filed on the Original Side of the High Court, the same is to be heard and disposed of by the Commercial Division of the High Court as per the proviso to Section 7 of the Ordinance. Thus, pending suits arising out of the said five Statutes are to be tried by the Commercial Division of the High Court even if their value is less than INR 10 Million (USD 1,49,800*).
4. Additionally, in case an application for amendment of the plaint is filed, the respective Single Judges must hear and consider the same in accordance with law, as there are decisions that an amendment application can be entertained even if the jurisdictional value of the Court has changed (increased or decreased), and such a direction is required as amendment applications are not being accepted by the Delhi High Court’s Registry.

Contention on behalf of the Respondents

The Counsel for the Respondent contended that both the matters should be taken up in January, 2016 as the Ordinance is likely to be replaced by Act in the Winter Session of the Parliament which might also clear the ambiguities in the Ordinance.

The Court’s Observation and Order

The Delhi High Court (which is also a Respondent in the case), in view of the consideration that interpretation to proviso to Section 7 of the Ordinance requires deliberation, ordered that till the next date of hearing (i.e. January 19, 2016) cases arising out of the aforesaid five IP Acts shall not be transferred from the High Court to lower courts and in case application seeking amendment in pecuniary value is filed, they shall be considered by the respective Single Judges of the Delhi High Court in accordance with law.

Conclusion

The entire matter came up in light of Delhi High Court (Amendment) Act, 2015 which inter alia amended Section 5(2) of the Delhi High Court Act, 1966 pertaining to jurisdiction of the Delhi High Court as aforestated. However, Section 7 of the said Ordinance apparently creates an exception to the same with respect to commercial disputes. The clarity expected in the Ordinance would play a pivotal role in determining pecuniary jurisdiction (and subsequently court fee to be paid) of the Delhi High Court in cases of IP matters.

*@ 1 USD = 66.76 INR

Delhi High Court: Cipla has Infringed Roche’s Anti-Cancer Drug Patent

In a recent decision rendered in the cases F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd. (RFA (OS) 92/ 2012) and Cipla Ltd. v. F. Hoffmann-La Roche Ltd. & Anr. (RFA (OS) 103/ 2012), the Division Bench of the Hon’ble Delhi High Court has ruled that Cipla has infringed Roche’s patent in a lung cancer drug sold under the trade name Tarceva. Reportedly, Roche was selling its drug Tarceva at INR 4,800 per tablet whereas Cipla was marketing a generic version of the drug under the name Erlocip at the cost of INR 1,600 per tablet.

Brief facts

F. Hoffmann-La Roche Ltd. (hereinafter “Roche”) filed a suit to injunct Cipla Ltd. (hereinafter “Cipla”) from marketing a generic version of its lung cancer drug, Tarceva.

Roche’s plea for interim injunction against Cipla was dismissed by the learned Single Judge of the Delhi High Court on grounds of public interest involved and the life-saving nature of the drug in question.

Roche’s appeal to the Division Bench of this Court against the order passed the learned Single Judge was also dismissed in April, 2009, on the back of a heavily public interest-centric reading of the Patents Act, 1970, as amended from time to time, and a detailed discussion of the relative affordability of the two drugs to the common man. The decision is reported as F. Hoffman-La Roche v. Cipla Ltd. (2009) 40 PTC 125 (Del).

The Division Bench further felt that Cipla had done enough to demonstrate a potentially credible challenge to the validity of Roche’s patent No. IN ‘774, including raising sufficient doubt over whether IN ‘774 had complied with full disclosure requirements.

Thereafter, Roche approached the Supreme Court of India by way of a Special Leave Petition which was also denied, and the case moved to trial.

Meanwhile, Cipla had sought revocation of Roche’s patent in the impugned drug; however the same was refused by the Single Judge during trial.

Aggrieved by the decision of the Single Judge, both Cipla and Roche appealed against the Single Judge’s order before the Division Bench of the Delhi High Court.

Contentions raised by Roche

1. Roche’s Patent IN 196774 was granted in February 2007 by the Indian Patent Office, which covered its patent rights over the Erlotinib Hydrochloride molecule which had demonstrated breakthrough capabilities as an Epidermal Growth Factor Receptor (EGFR) inhibitor which spiked survival benefit in cancer including non-small cell lung cancer (NSLC) patients.
2. Roche alleged that Cipla had infringed its impugned drug under the name Tarceva by marketing the generic version of the drug under the name Erlocip.
3. Cipla’s drug was also Erlotinib Hydrochloride and manufacture of Polymorph B by Cipla was sufficient to trigger infringement of Claim 1 of its patent IN ‘774.

Contentions raised by Cipla

1. Roche’s patent IN ‘774 had not complied with full disclosure requirements as required under Section 8 of the Patents Act, 1970.
2. Roche’s patent IN ‘774 is invalid             under Section 64 (1)(f) of the Patents Act, 1970 for lack of inventive step and for being obvious.
3. Not only did Roche’s IN ‘774 specification fails to disclose how it was inventive but there were compelling evidences which indicated that it was more combination and less innovation.
4. That the closest prior art to IN ‘774 and EP 0566226 (admitted as prior art) had extremely materially similar, if not identical, structures.
5. That Roche had unsuccessfully applied for a Polymorph B form of Erlotinib Hydrochloride (Patent IN/507/Del), a claim which was rejected by the Indian Patent Office in 2008 with the findings on evergreening, structural similarities between IN ‘774 and EP ‘226 and a lack of conclusive comparative clinical data to prove efficacy.
6. That invention is required to be product specific, where products have to have commercial manifestation, since infringement is relatable to “that product‟ which is patented and not to any “substance”.
7. That while the patent sought to be enforced is for Polymorphs A+B, the product actually under manufacture by both Roche and Cipla is Polymorph B which ought to be assumed to be in the public domain and hence Cipla’s activities are non-infringing in nature.

Court’s Observations

The Division Bench of the Delhi High Court reversed the order of the Single Judge and passed a judgment in favour of Roche by holding that Cipla had infringed Roche’s impugned Patent for lung cancer drug. However, the injunction prayed for by Roche against Cipla in India was not granted considering that the life of the said patent would expire in March 2016. While arriving at its decision, the Division Bench made reference to a plethora of judgments dealing with the nuances of Patent Law including “inventive step”, “disclosures to be made under the Law” etc. and made the following observations:

1. That it was not in dispute that Roche’s unsuccessful patent application in India (DEL ‘507) was for a Polymorph B form of Erlotinib Hydrochloride, a claim that had been rejected by the Indian Patent Office in 2008 with observations on evergreening and structural similarities between IN ‘774 and DEL ‘507.
2. That the process claims for making Polymorph B in DEL ‘507 had already matured into Patent No. 231102 and only the product claims pertaining to Polymorph B were refused.
3. That the purpose of Section 3(d) of the Patents Act, 1970 is to encourage incremental innovation in pharmaceuticals. It lays down a threshold for what subject matter would qualify as the “same” or “known” substance and what would qualify as a “new” substance. The purpose of this qualification is that when something is same/ known substance, then the derivatives of such a substance as enumerated in the Explanation to Section 3(d) would be covered under the same protection that exists for the known substance (which could also mean that if the known substance is not covered by a patent then the derivative would not be covered as well).
4. That while the present patent covers Erlotinib Hydrochloride (or polymorphs A+B of the same), the rejection of the patent application for Polymorph B (DEL ‘507) by the Indian Patent Office leads to a direct conclusion that there was a lack of sufficient matter to suggest that Polymorph B qualified as a “new product” for consideration under Section 2(1)(j) of the Patents Act for patentability and should therefore be regarded for all practical purposes as the old product itself i.e. Polymorphs A+B.

In view of the aforesaid, the Division Bench of the Delhi High Court held that Cipla has infringed the said patent of Roche, and directed Cipla to render its accounts concerning the manufacture and sale of its generic drug Erlocip and also imposed a cost of INR 500,000/- on Cipla.

Conclusion

The Roche-Cipla dispute over the lung cancer drug “Erlotinib” was one of the initial patent disputes filed in the country and had been keenly watched ever since. The Division Bench of the Delhi High Court has referred to a plethora of judgments including that of foreign jurisdictions in order to arrive at the aforesaid decision. It is hoped that the final outcome of the infringement suit and the judgement would be helpful in deciding other similar pharmaceutical infringement disputes in India. 

Anchor’s “ALLROUND PROTECTION” not good enough to protect it from Colgate !

Division bench of the Hon’ble Delhi High Court on November 19, 2015 decided the appeal titled as ‘Colgate Palmolive Company & Anr. vs. Anchor Health and Beauty Care Pvt. Ltd.’ in favour of the Appellants/Defendants (herein after referred to as “Colgate”) and against the Respondent/Plaintiff (herein after referred to as “Anchor”).

The said appeal was filed against the order of the Single Judge allowing the application of the Plaintiff under Order VI Rule 17 of the Civil Procedure Code, 1908 (“CPC”), for amendment of the Suit Plaint.

Facts of the matter:

During the pendency of the suit filed by Anchor against Colgate for the use of “All-Around Decay Protection” on the carton launched in 2007, Anchor’s mark “Allround” (“impugned mark”) was registered on August 26, 2008. Thereafter, in December, 2011, Anchor filed the aforesaid application, to change the suit from a passing off matter to an infringement suit, which was allowed vide impugned order dated February 14, 2012.

Amendments sought by Plaintiff:

1. Suit heading - “Suit for declaration and permanent injunction restraining infringement of registered trade mark/passing off, tortious acts of unlawful interference in the Plaintiff’s business, acts of unfair competition, economic duress and causing loss…” whereas original suit could not have been for “permanent injunction restraining infringement of registered trade mark” as the Anchor’s trade mark was not registered in 2007.
2. Amendments would include averments that Anchor had sought registration of the impugned mark on September 2, 2005 and the same was granted during the pendency of the suit.

Order of the Single Judge:

The learned Single Judge was of the opinion that since the law of the amendment of pleadings is “rather liberal in nature” the amendments should ordinarily be allowed, “unless it is likely to prejudice the opposite party or is likely to take away a vested right which has accrued to the opposite party provided that opposite party can be compensated in terms of cost.”.

The learned Single Judge held that objection as to the suit being time-barred was without substance as suit was based on a continuing cause of action. The objection that the amendment permitted alteration of the suit from one kind to another was also overruled.

Contentions of the Appellants/Defendants:

1. Original suit never disclosed that an application for registration of the impugned mark was pending in the name of Anchor. Further, the original suit claimed that the overall get up and description of the product by Colgate was similar to Anchor.
2. Even if registration was granted in August, 2008, Anchor made no attempt to amend the suit at that point and only applied amendment of the suit in 2011, after the lapse of 3 year period.
3. Relied on judgments of the Supreme Court, urging the general rule that parties are not allowed by amendment to set up a new case or cause of action which is barred.

Contentions of the Respondent/Plaintiff:

1. Basic facts relating to confusion based on passing off were not undermined by the amendment, there was no fundamental change in the nature of the suit or the cause of action and in any case a fresh suit based on infringement could have been filed, that would not be time barred.
2. The fundamental ground on which the suit is based continues to be the same if the amendment is allowed. It is not correct to say that anchor has added a new cause of action and what is introduced is only an additional ground, to challenge the use of the impugned mark by Colgate.

Observations and order of the Division bench:

In the original suit of Anchor, emphasis was on the use of the term “Allround Protection” which was used to describe its own toothpaste. The present suit is being filed to place on record the conduct of the defendants which are using all possible methods to curb healthy competition from the plaintiff.”

Anchor consciously did not seek to amend the suit, till December, 2011, for more than four years after filing of the suit and over 3 years and 2 months after securing registration of the impugned trade mark.

That Single Judge wrongly held that since the cause of action remained in respect of use of the term “Allround” which remained unchanged, no prejudice could be caused.

In view of the above, the present appeal of Colgate succeeded and the amendments allowed by the learned Single Judge were not to be made part of the record of the suit alongwith the subsequent amendments to the written statement. The impugned order was set-aside and application of Anchor dismissed.

Conclusion

It is once again clarified by the above judgement that Courts do not help protect the rights of those who have willingly/knowingly slept on their rights.

Anchor had no substantiated reason for not moving the court with an amendment application as soon as its trade mark was registered. In fact, the original plaint made no reference to its pending application in the impugned trade mark which in the eyes of the court goes to show that Anchor filed the suit in haste and waited too long to seek amendment thereof.

In general suits for injunction against passing off the Court may allow amendment plaint to make an infringement suits. However, in those cases the original plaint must contain the submission that an application for registration of trademarks is pending before the Trade Marks Registry.