Monthly Archives: November 2011

Ex-Parte Interim Injunction Passed against Symed Laboratories Ltd. for Infringement of Vifor (International) Ltd.’s Patent

An Ex-Parte Interim Injunction was recently passed against Symed Laboratories Ltd. (a Hyderabad based Pharmaceutical Company) by Delhi High Court in a patent infringement suit filed by Vifor (International) AG (a Swiss Pharmaceutical Company). The lawsuit was filed by Vifor against Symed Labs for the infringement of one of Vifor’s Indian granted Patents: IN 221536.

Vifor is a specialty pharmaceuticals company focused on treatment of iron deficiency and offers a number of prescription as well as over-the-counter products and has an iron replacement product portfolio consisting of its products Ferinject®, Venofer® and Maltofer®. Vifor has about 7 granted patents published at the Indian Patent Office. The Patent in question is on a water soluble Iron Carbohydrate complex for the treatment of iron deficiency anemia and a process for producing the same. The first claim of the Patent is as follows:

“Water soluble iron carbohydrate complexes obtainable from an aqueous solution of iron (III) salt and an aqueous solution of the oxidation product of one or more maltrodextrins using an aqueous hypochlorite solution at a pH-value within the alkaline range, where, when one maltodextrin is applied, its dextrose equivalent lies between 5 and 20, and when a mixture of several maltodextrins is applied, the dextrose equivalent of the mixture lies between 5 and 20 and the dextrose equivalent of each individual maltodextrin contained in the mixture lies between 2 and 40, wherein the obtained iron complexes have an average molecular weight of 80 kDa to 400 kDa.”

Symed is involved in manufacture and marketing of bulk pharmaceuticals products, and has launched an alleged infringing product iron carboxymaltose (ferric carboxymaltose) and is also advertising the same at its website. The product of the Vifor’s said patented invention is Ferinject® , an iron complex that consists of a ferric hydroxide core stabilized by a carbohydrate shell, allows for controlled delivery of iron to target tissues.

The major novelty of the claimed invention seems to lie in an average molecular weight of 80 kDa to 400 kDa which has not been disclosed before the priority date of the invention as argued by Vifor’s counsel (as understood from a cursory look of the cited prior arts in the prosecution history of the patent published at the Indian Patent Office). The closest prior art as cited by the examiner disclosed average molecular weight range of 300-5000. The defendant can study the complete prosecution history of the patent and can try to conduct a strong prior art search especially which covers this molecular range to invalidate the subject patent. The defendant can also study the prosecution history of the family patent applications to see for examples, whether or not the same has been granted or not, the kind of prior art references cited therein, the objections made by the examiners and so forth. This Article is being written only to provide information on the passing of this order and not to evaluate whether the patent in question is valid or not and therefore detailed search & analysis on the patent in question is not carried out.

Further there is an ongoing discussion (for example at Spicy IP) whether the Indian Courts should grant ex-parte injunctions in the patent infringement matters especially where most Indian Judges are not that technically capable to comprehend on their own (they mostly need the assistance of expert witnesses to assess the patent infringement and validity matters). For example, in this order, the Judge did not discuss as to how denial of an ex-parte order would cause irreparable injury to the Plaintiff and further did not discuss the claims at once.

The complete Order of the Justice Sistani is available here.

 

About the Author: Ms. Meenakshi Khurana, Patent Specialist at Khurana & Khurana and can be reached at: meenakshi@khuranaandkhurana.com

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No Exclusive Trademark Rights to Lord Krishna’s name: Delhi High Court

Delhi High Court’s Division Bench recently upheld the Single Judge Bench Judgment declining the claim of the Appellant, Bhole Baba Milk Food Industries Ltd. (a diary products manufacturer) of exclusive right over the use of word ‘Krishna’ for dairy products.

The Appellant has obtained registration of the mark “KRISHNA” having pictorial reflection of Lord Krishna standing on a lotus flower for dairy products falling in Class-29 of the Trade Mark Act vide Trade Mark No. 597519 and has been manufacturing ghee, milk products and dairy products since 1992. The Appellant has also obtained registration of the label mark “KRISHNA” in the same class vide Trade Mark Nos 783679 and 599070. Following is the representation of the mark 597519 and 599070 respectively

The Appellant accused Parul Food Specialties Ltd (Respondent, also a diary products manufacturer), of infringing on its trademark “Krishna” The Respondent were selling ghee under the mark “PARUL’S LORD KRISHNA”, “Parul’s” and “Lord” having a font so small that only the word “KRISHNA” catches the eye due to its prominence. The Appellant further asserted that the word “KRISHNA” has become a “well known” within the meaning of Section 2(zg) of Trade Marks Act and has acquired secondary distinctiveness (as evidenced from their sales figures).

On January 19, 2011, the Single Judge, Justice Rajiv Shakhdar refused to give exclusive trademark rights of the word “Krishna” and declined to grant injunctive relief to stop the Respondent from using mark “Krishna”, but directed the Respondent to change the font size and to print the words “PARUL’S LORD” with the same prominence as the word “KRISHNA” so that it would not be confused with the products of the appellants.

The Appellant thereon appealed to the Division Bench, consisting of Justice Pradeep Nandrajog and Justice Sunil Gaur. The division bench upheld  the single-judge bench’s order against Bhola Baba’s plea and said: “We are in agreement with the view taken by the learned single judge not only for the reasons given by the learned single judge but the additional reason, as in the instant case, a deity may be associated with a particular kind of goods.  It is common knowledge that Lord Krishna, as a child, was known for his love of milk and butter and thus Lord Krishna is closely linked with milk and butter and this would certainly dilute a proprietary claim projected by any person, in relation to Krishna with dairy products”.

The Division bench further highlighted that the registration obtained by the Appellant is not per-se to the word “KRISHNA” but is to the word “KRISHNA” written in a distinctive form. The Division bench concluded that “The distinctiveness to which the appellant can lay a claim is to what it has got registered as a whole and such registration cannot possibly give an exclusive statutory right to the appellant qua a particular word of common origin”.

Judgment of the Division Bench is tentative and the Final decision post trial would be with respect to the evidence led.

The Complete judgment of the Division Bench can be read from here and the complete Single-Judge Bench’s Order is available here.

The Indian Trade Marks Registry has recently uploaded on their website a list of 86 marks which have been prohibited from grant of registration and the list can be viewed by clicking here.

About the Author: Mr. Vinayak Aher, Trade Mark Attorney in Khurana & Khurana and can be reached: Trademark@khuranaandkhurana.com.