Here is our recap of last week’s top IP developments including summaries of the posts on formulation/composition claims and Section 3(d), Managing IP’s Most Influential People in IP List, and Médecins Sans Frontières (MSF) suit against Dharma Production. This and a lot more in this week’s SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
Formulation/Composition Claims and Section 3(d): Analyzing the Utidelone Pre-grant Opposition Order
In light of the recent UTIDELONE patent grant order by the Indian Patent Office, Bharathwaj Ramakrishnan analyses the tactic to present a pharmaceutical invention as a composition to overcome Section 3(d) scrutiny and how this could be bad in law.
Delhi High Court Judges Included in ‘Most Influential People in IP’ List: Revisiting their Judgments from a Critical Eye
Justices Amit Bansal and Jyoti Singh of the Delhi HC feature on the British Media Platform’s list. The platform has lauded Justice Bansal for his ruling in Telefonktiebolaget Lm Ericsson(Publ) v. Lava International Ltd and Justice Singh for her judgement in Communication Components v. Mobi Antenna Technologies. Samridhi Chugh writes on this development and critically analyses the two judgments!
Other Posts
Marico v. Alpino and Generic Disparagement: Alpino seeks vacation of ex-parte injunction alleging suppression of facts. Marico had sought injunction on Alpino’s advertisement alleging generic disparagement of “oats”. Read Kaustubh Chakrabarti’s post on this development and the “Clean Hands Doctrine”.
SpicyIP Tidbit: Médecins Sans Frontières suit against Dharma Productions for Jigra scene
Médecins Sans Frontières (MSF) filed a suit against Dharma Productions for using its trademark in the movie Jigra. The movie has a scene where the lead actress (played by Alia Bhatt) while illegally escaping to international waters identifies as “Doctors without Borders”. Read this Tidbit by Md Sabeeh Ahmad discussing MSF’s averments and the potential trademark questions that may arise!
SpicyIP Tidbit: Mankind v. A2 Lifesciences: Resorting to Mediation to Resolve IP Disputes
While interim injunctions seem to be the go-to remedy in India against IP infringements, negotiation as a means to resolve IP disputes rarely gets the same traction. The recent Delhi High Court order in Mankind Pharma Ltd. v. A2 Lifesciences & Anr. is an apt example of how negotiations can assist in the timely resolution of IP disputes and address issues that may take years to address in court. Read this tidbit by Shravya Pandre on the case, underlining the role of mediation in resolving IP disputes!
Case Summaries
Fena Private Ltd vs Balwinder Kumar & Anr. on 11 December, 2024 (Delhi HC)
The cancellation petition was filed seeking cancellation/removal of the trademark ‘NIPPU’ from the Register of Trade Marks. The petitioner had adopted and registered the mark ‘NIP’ in the year 1975 and used the same in respect of dishwash bar, gels, powder, cleaners and detergents. The respondent had obtained registration of the mark ‘NIPPU’ in 2018 on a ‘proposed to be used’ basis. The petitioner filed Notice of Opposition against the same but the said opposition was abandoned by the Senior Examiner of Trade Marks on the ground of non-filing of evidence. The Court held that the trademark of the respondent was confusingly/deceptively similar to the petitioner’s prior adopted, registered trademark ‘NIP’ but the nature of the goods of the petitioner and the respondent are also identical. The respondent did not participate in the proceedings. The Court directed the Trade Marks Registry to remove the registered trademark ‘NIPPU’.
The suit was filed by the plaintiff company seeking a decree for permanent and mandatory injunctions for infringement of trademarks and copyrights and passing off. The plaintiff company had registered the marks ‘BACHPAN’ & ‘BACHPAN…. a Play School’ either as a word mark, label or device. The plaintiff company alleged that it had entered into an agreement with the defendant to give them franchise of their play school. This agreement ended in 2017 and the plaintiff called upon the defendant to renew the franchisee agreement till the end of 2018. The defendant did not renew the same but continued using the trademark of the plaintiff to run their school. A liability of Rs. 2,81,745 was also pending for royalty/AESC charges. The Court decreed the suit of plaintiff company ex-parte and passed a decree for permanent injunction restraining the defendants, from running or administering the above play school or any other play school, directly or indirectly, under the trade marks/devices/labels ‘BACHPAN’ & ‘BACHPAN…. a Play School’. However, the Court did not give relief to the plaintiff for the recovery of the pending amount since the plaintiff had not shown how the same was calculated.
Pfizer Inc. & Ors. vs Everest Pharmaceuticals Limited & Ors. on 13 December, 2024 (Delhi HC)
The suit was filed seeking relief of permanent injunction restraining the defendants from infringement of plaintiff’s patent. The plaintiffs are owners of the suit patents, the claims of which cover Tofacitinib and that Tofacitinib is the active pharmaceutical ingredient of the product marketed under the name Xeljanz®. Xeljanz® was launched in India in the year 2016. It was alleged that the defendants were advertising and offering for sale the generic version of the plaintiffs’ patented product on their respective websites as ‘Tofaxen’. The Court found that the Defendant had engaged in the unauthorized export, sale, supply, and distribution of the infringing product ‘Tofaxen’ within India. However, since the suit patents had expired during the pendency of the suit, the plaintiffs did not press for relief of permanent injunction and therefore were directed to file their bill of costs for calculation of actual costs.
Federated Hermes Ltd vs John Doe & Ors. on 5 December, 2024 (Delhi HC)
The suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trade mark and copyright of the plaintiff, passing off the services as those of the plaintiff. The plaintiffs averred that the marks “FEDERATED HERMES” and its logo has been consistently used and extensively promoted. The plaintiffs alleged that the defendants are unknown individuals or entities (referred to as ‘John Doe,’) who are unauthorizedly misusing the plaintiff’s trademarks “FEDERATED HERMES” and logo to operate a fraudulent investment and stock trading business. The plaintiff had allegedly received multiple detailed emails from victims of the defendant’s fraudulent operations. The Court had earlier granted an ex-parte interim injunction. The Court held that the plaintiff’s name, trade mark and copyrights have been used by the defendant with the clear intent to defraud and deceive the public, and therefore plaintiff’s were granted permanent injunction.
Other IP Developments
- Drug pricing regulator NPPA has sought Patent Office expertise to decide exemption from drug price norms.
- The Delhi HC has held that the mere assertion that a thesis involves IP or holds commercial value is insufficient exempt from disclosure under the Right to Information Act, 2005.
- Delhi High Court grants interim protection to Moti Mahal; temporarily restrains its ex-franchisee from using Moti Mahal’s registered trade marks
- Delhi High Court grants interim injunction against misuse of personality rights and IP of journalist Rajat Sharma
- The Delhi HC Court has passed an interim order protecting actor Mohan Babu’s personality rights.