Monthly Archives: April 2013

An insight on the legal implications of BYOD

Bring Your Own Device (BYOD) is a scheme wherein employees are allowed to bring their own devices like mobiles, laptops, tabs and utilize them in the workplace for work purposes. Some employers themselves fund the software to their employees, meanwhile some prefer to simply grant permission for their employees to bring their technology at their own expense.

This is beneficial to the employee since it would be evident that he would be comfortable using his own devices, adding to the fact that he can work from home on his own gadget at his own convenience. Sounds simple, doesn’t it?

Unfortunately, this scheme seems to have created numerous problems as far as employers i.e. companies are concerned. It is a herculean task for companies to keep a check on which device is being used and by whom and for how much time. If companies remain oblivious to this and let the employees have a free reign over the usage of their software, it can serve as a deterrent in the form of unending and expensive infringement litigations due to security breach and/or privacy and data protection interests. Hence, many companies are averse to BYOD since the risks outdo the benefits involved.

If you think about the intellectual property rights that can protect anything being used via the BYOD scheme, the utmost concern would be your copyrighted works. Anything that the user is enabled to see on screen, be it algorithms, source codes, object codes, software designs, databases, manuals, complete written specifications of the software, and so on, can be copyrighted. Now, the question stands as to the ownership of these copyrighted works.

Coming to the Indian scenario, under the Copyright Act, 1956, the ownership of the copyrighted work generally vests with the employer, unless there exists a contrary agreement between the employer-employee.  The question arises here is in case the employee uses his own Device to better the copyrighted works belonging to the employer, who would be the rightful owner of the intellectual property rights of the works? Further, an employee can engage in infringement activities simply by unlawfully copying and storing the copyrighted works on his personal device. Altering or deleting data can also invite severe repercussions for the employee.

Meanwhile if the employees are using unlicensed software for their work purposes, the employers can be held liable for infringement. The employer can be held vicariously liable unless guidelines are not written down to protect their interests.

Hence, companies need to implement guidelines that control the usage of BYOD devices and maintain regular checks of these devices to ensure there are no illegal activities taking place. Along with guidelines, password protection, encryptions, antivirus and wireless access policies can be implemented along with various other privacy policies in order to prevent legal misuse of softwares. The onus, in the end, remains on employees to be diligent while using their own gadgets in workplaces.

About the Author: Ms. Madhuri Iyer, Trade Mark Attorney at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com

Follow us on Twitter: @KnKIPLaw.

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Generic v. Branded patent battles in India foray into life management diseases too

Patent wars in India between the foreign innovator companies and the Indian generics now seem to be spreading over life-management diseases segment. Till now the patent infringement cases have revolved and are still revolving over drugs for life-threatening diseases such as HIV, cancer where the public interest has played an important factor in the adjudication of the cases. However a recentlaunch of a generic version of Merck’s anti-diabetic blockbuster drug Januvia by Glenmark has opened the gates to India’s its first such patent litigation case in Diabetes market.

Merck sued Glenmark for infringing over it their product patent on Sitagliptin (marketed as Januvia) on April 01st, 2013. Merck sought to obtain an interim injunction against Glenmark seeking to restrain Glenmark from launching its Generic products Zita (generic version of Januvia) and Zita met (generic version of Janumet, combination of sitagliptin+metmorphin). The Delhi High Court however refused to grant the relief to Merck by its decision of April 5th available over here.

The arguments made by Glenmark get the case to follow in a similar direction as Roche v. Cipla. In Roche v. Cipla, Cipla argued that their generic drug Tarceva is a polymorphic form B of Erlotinib Hydrocloride which the valid product patent of Roche does not claim. In addition, Cipla argued that Roche filed a separate Indian patent application on the polymorphic form B which was rejected U/S 3d proving that polymorphic form B is a separate invention not covered in the product patent, on basis of which Cipla was successful in proving non-infringement of the Roche’s patent at the Delhi High Court (the case is now pending at the Supreme Court).One point to be noted is that Cipla sold Tarceva at ~1/3rd of the price of Roche’s marketed drug and that the drug was an anti-cancer agent.

Coming to Merck v. Glenmark, the arguments by Glenmark flowed in the similar direction wherein Glenmark argued that:

  • Merck filed a separate application on Sitagliptin phosphate via 5948/DELNP/2005 which was rejected and affirmatively abandoned by Merck.
  • Merck had also obtained separate US and EP patents on Sitagliptin phosphate wherein Merck admitted that Sitagliptin Phosphate is a new discovery over the main product patent by describing the salt as “novel salt”. Further added that if Sitagliptin phosphate had been not a distinct product from sitagliptin, Merck would not have applied for or obtained a separate patent.
  • Merck suppresses the later Indian patent filing, rejection and abandonment of  5948/DELNP/2005 covering phosphate salt
  • Merck’s ‘816 patent is for Sitagliptin Hydrochloride only and not for Sitagliptin Phosphate
  • Glenmark’s counsel also placed reliance on Novartis Judgement saying “coverage in a patent cannot be permitted to go much beyond the disclosure made by the patentee and that the scope of patent cannot be permitted to be determined by the artful drafting of its claim by skilful lawyers instead of intrinsic worth of the invention”
  • On the basis of the Roche v Cipla judgment, it is further contended that “where the role of variant outweighs the patented claim, there can be no infringement”.

Glenmark, in its arguments, thus relied mainly on separate patent filing on Sitagliptin Phosphate and proving that Merck itself acknowledges that the two are separate inventions and that Glenmark’s selling of the Sitagliptin phosphate salt will not infringe the ‘816 patent.

Merck argued that:

Sitagliptin phosphate being a derivative of Sitagliptin, could not be granted an Indian patent U/S 3d and that the application was misconceived, which was rejected and later abandoned by Merck itself. Merck contended that there are separate patents in US, EP or other countries because there is no section 3d equivalent there. Merck’s counsel also, to allay any influence of the Novartis judgement, contended that there is no price difference in the product of the plaintiffs (Merck) and defendant (Glenmark) and that it cannot be said that the product of the defendant is considerably cheaper than that of the plaintiffs.

According to Judge,

“To my mind, if the infringing product are made with the same object in view which is attained by the patented article, then a minor variation does not mean that there is no infringement. Trifling and unessential variations are to be ignored. Conversely, a miniscule advancement could be recognized as an invention.”

The Judge further added that if it is proved that Sitagliptin phosphate has material effect on the ways Sitagliptin works, defendant would not infringe the plaintiffs patent.

The Judge highlighted that it was for Merck “to have made a case of Sitagliptin Phosphate being merely a new form of sitagliptin which does not result in the enhancement of the efficacy of sitagliptin”, instead Merck only pleaded that Sitagliptin phosphate is same as Sitagliptin which they cannot be prove in light of the separate filing of the phosphate patent.

The Judge therefore did not find Merck to have made case for grant of interim relief and accordingly has dismissed the application. But the court, of course, gave directions to Glenmark to maintain and file accounts of the manufacture and sales of the infringing products every quarter before the Court and to the counsel for the plaintiffs.

Conclusion

It would be interesting to see how this case unfolds during trial, especially it would be interesting to see how strongly the Roche v. Cipla case would act as precedent for this case.  There is a similarity of arguments on separate patent application filing and rejection of new form in both cases. There is a difference however in pricing issues and public interestin this case. In Merck v. Glenmark, Plaintiff’s drug (not an anti-cancer or anti-HIV) was already launched in India with 1/5th of the prices in USA with a current price difference between plaintiff’s and defendent product being ~30% only, unlike in Roche v. Cipla where the plaintiff’s drug was 3 times more expensive than the defendant’s product and was an anti-cancer agent.

Further in Roche v. Cipla, the original product patent did not disclose polymorphic forms A or B even generically. However, in Merck v Glenmark, ‘816 patentnot only discloses pharmaceutically acceptable salts but also mentions phosphoric acid as one of salt forms among a list of other salts. The Examples though disclose only HCl salt forms.

Wouldn’t the test of infringement involve “reading” a claim of the patent onto the potential infringer’s product, wherein if the claim’s elements are found in the product, said product will infringe. In this case, claim 1 in general and claim 19 specifically covers Sitagliptin and pharmaceutical acceptable salts thereof.And thepharmaceutically acceptable salts are defined in the description as:

The term “pharmaceutically acceptable salts” refers to salts prepared from pharmaceutically acceptable non-toxic bases or acids including inorganic or organic bases and inorganic or organic acids……………………….When the compound of the present invention is basic, salts may be prepared from pharmaceutically acceptable non-toxic acids, including inorganic and organic acids. Such acids include acetic, benzenesulfonic, benzoic, camphorsulfonic, citric, ethanesulfonic, fumaric, gluconic, glutamic, hydrobromic, hydrochloric, isethionic, lactic, maleic, malic, mandelic, methanesulfonic, mucic, nitric, pamoic, pantothenic, phosphoric, succinic, sulfuric, tartaric, p-toluenesulfonic acid, and the like. Particularly preferred are citric, hydrobromic, hydrochloric, maleic, phosphoric, sulfuric, fumaric, and tartaric acids  (emphasis added)

Shouldn’t Sitagliptin phosphate gets covered in the ‘816 patent especially due to the fact thatphosphoric acid is mentioned not only in just a laundry list,but is mentioned amongst “Particularly preferred” acids in addition to just 7 other acids?

Furthermore, shouldn’t manufacturing Sitagliptin Phosphate includemaking and using of Sitagliptin,and hence infringe upon ‘816 patent anyways? Shouldn’t Merck prove that manufacturing Sitagliptin Phosphate will infringe its ‘816 patent as the defendant cannot produce Sitagliptin Phosphate without producing Sitagliptin first and thus infringing the ‘816 patent.It might prove to be a better strategy for Merck rather than proving a point that Sitagliptin phosphate and Sitagliptin are same and are claimed in a single patent because filing a separate patent for the salt, arguing in US/EP prosecution that the salt is a novel one and a new discovery over the main patent may go against Merck keeping in view the Roche v. Cipla case, which the court is very likely to follow in this case.

It would be interesting to see how all these factors will be considered by the court in deciding whether Glenmark infringes or not.

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

Follow us on Twitter: @KnKIPLaw .

India Joins Madrid Protocol

India became signatory to the Madrid Protocol for International Registration of Marks at the World Intellectual Property Organisation (WIPO) on 8th April 2013. Now, Indian applications can register their Trade Marks in as many as 89 countries through a single application. India is the 14th G-20 economy to accede to the protocol. The treaty will enter into force with respect to India on July 8, 2013 according to the WIPO statement.

The Madrid System offers trademark owners a cost-effective, user-friendly and streamlined means of protecting and managing their trademark portfolios internationally. In 2012, there were 44,018 applications by companies for registration of trademarks under the Madrid System, marking a growth of 4.1% over 2011.

The Madrid system is equally attractive to large businesses as well as small and medium-sized enterprises, which are the largest users of the system. In the midst of current global economic conditions, the Madrid system has shown signs of strength, evidence of its advantages in protecting trademarks internationally.

Background (Extract: WIPO website)

Under the WIPO-administered Madrid system, a trademark owner may protect a mark in up to 88 countries plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).  The Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant.

If protection is not refused by the trademark office of a designated contracting party, the status of the mark is the same as if it had been registered by that office. Thereafter, the international registration can be maintained and renewed through a single procedure. Thus, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.

The international trademark system is governed by two treaties, namely, the Madrid Agreement Concerning the International Registration of Marks (1891) and the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989).

I know where I will be on 8th July, 2013. What about you?

About the Author: Ms. Madhuri Iyer, Trade Mark Attorney at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com

Follow us on Twitter: @KnKIPLaw.

The Glivec saga in India is finally over

As it has been widely covered by media in and outside India, it is no new news to pharmaceutical and patent fraternity that Novartis has lost about 7 year long legal battle to secure a patent protection for its invention on beta crystalline form of imatinib mesylate in India.

A 112 page long Supreme Court judgement delivered by a Supreme Court (SC) bench comprising Justice Aftab Alam and Justice Ranjana Prakash Desai details a complete account of all events leading to appeal to Supreme Court and a historical account of India’s patent regime including policy decisions leading to amendment of section 3d in 2005, in addition to providing detailed discussion on entire facts of the case.

The whole pharmaceutical community around the world were eagerly waiting for the decision and particularly to know how the Supreme Court construes a controversial section 3d. We would discuss herein SC’s discussion and decision especially on section 3d.

Events leading to appeal to the Supreme Court

  1. Novartis filed a patent application 1602/MAS/1998 at the Indian Patent Office.
  2. Five pre-grant oppositions were filed by various Indian generic companies and the Cancer Patient Aid Association (CPAA).
  3. The Application was rejected by the Controller in 2006 after hearing 5 pre-grant oppositions.
  4. Novartis filed an appeal to Madras High Court. The appeal was eventually transferred to the Intellectual Property Appellate Board (IPAB) after its formation. Novartis also filed writ petitions challenging section 3d of the Indian Patent Act which were dismissed by the High Court after which no further action was taken by Novartis.
  5. IPAB upheld the Controller’s decision in 2009.
  6. Novartis filed an appeal to the Supreme Court in later in 2009.

What is Section 3d?

This case mainly revolves around whether the beta crystalline form of imatinib mesylate is hit by section 3d and thus unpatentable in India. There was a detailed discussion in the judgement on how section 3d is introduced and amended and how section 3d is a part of patentability criteria.

So, let us first see what section does section 3d mean: Section 3d bars patent protection to new forms (including salts, esters, polymorphs, crystalline forms, derivatives etc.) of known substances unless the new forms result in an enhancement of the known efficacy.

Supreme Court held that in this case, “known substance” is imatinib mesylate and not imatinib in free base

SC held that that the prior art patent US Patent No. 5,521,184 (Zimmermann patent) claiming imatinib, also discloses imatinib mesylate and the known substance with which the beta crystalline form must be compared to show enhanced efficacy thus should be imatinib mesylate and not imatinib in free base form.

Novartis in its arguments had compared beta crystalline form of imatinib mesylate with imatinib in free base form to prove enhanced efficacy (Novartis showed 30% enhanced bioavailability in beta crystalline form over imatinib in free base plus other physico-chemical properties as discussed hereinafter).

Evidence that proved that imatinib mesylate is disclosed in Zimmermann patent :

Zimmermann patent discloses imatinib in free base form and further discloses a broad coverage of pharmaceutical acceptable salts (including acid addition salts) generally where explicit disclosure of mesylate salt is not there. The patent is granted in 1998.

Novartis filed a new US patent on beta crystalline form of imatinib mesylate. The patent is granted in 2005.

NDA (New Drug Application) for Glivec or Gleevec was filed in 2001, where the active ingredient of the drug was stated as Imatinib mesylate.  Active ingredient, composition and method of use were also declared by Novartis to be covered by the Zimmermann patent.

Further, when Novartis sent a legal notice in 2004 to Natco, the company selling generic version of Glivec in UK, Novartis stated in the notice that the Zimmermann patent (EP equivalent) claims imatinib and its acid addition salts such as the mesylate salt.

The judges concluded based on the above evidence that imatinib mesylate is disclosed in Zimmermann patent and thus is a known substance with which beta crystalline form must be compared to show enhanced efficacy over the known substance.

Supreme Court held that “efficacy” in case of chemical substances, especially medicine, is “therapeutic efficacy”

Madras High Court earlier in this case held efficacy to mean therapeutic efficacy.

SC re-clarifies the meaning by saying,

“Efficacy means“the ability to produce a desired or intended result”….. Therefore, in the case of a medicine that claims to cure a disease, the test of efficacy can only be “therapeutic efficacy”……..What is evident, therefore, is that not all advantageous or beneficial properties are relevant, but only such properties that directly relate to efficacy, which in case of medicine, as seen above, is its therapeutic efficacy.”         (emphasis added)

Novartis tried to prove enhanced efficacy by showing better physico-chemical properties (such as better flow properties, better thermodynamic stability, lower hygroscopicity etc.) over imatinib in free base form. However SC held that these properties can give better processability, storability, stability etc. but cannot be said to possess enhanced efficacy (that is therapeutic efficay) over Imatinib Mesylate under section 3d.

Whether 30% increase in bioavailability is enhancement in therapeutic efficacy in this case?

SC clarifies that

“…just increased bioavailability alone may not necessarily lead to an enhancement of therapeutic efficacy. Whether or not an increase in bioavailability leads to an enhancement of therapeutic efficacy in any given case must be specifically claimed and established by research data.”

It was held that no evidence was provided by Novartis to prove that the beta crystalline form of Imatinib Mesylate shows an enhanced therapeutic efficacy (on molecular basis) over Imatinib free base in in vivo animal model.

SC thus finally concluded and held that the beta crystalline form of Imatinib Mesylate fails the test of section 3(d) and thus is unpatentable.

Conclusion:

1. Efficacy in section 3d would be construed as the “therapeutic efficacy”, especially in case of inventions pertaining to chemical compounds in medicine.

2. How much “enhancement” in efficacy makes the new form to overcome 3d, is still open-an ended question?

3. Whether an increase in bioavailability is an increase in therapeutic efficacy would depend on a case to case basis. If a fact that an increase in bioavailability increases a therapeutic efficacy, is claimed and is established by research data (preferably in vivo), then section 3d could be overcome.

4. The judgement sets a legal precedent to all pending and forthcoming patent cases involving section 3d in India. However it is being discussed and speculated that judgement will act as only limited precedent because the judgement is very fact-specific.

5. (An obvious point) Generic companies, health activist groups and patients in India are very happy with the decision, whereas MNCs and innovator companies around the world condemned the decision.

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

Follow us on Twitter: @KnKIPLaw .

Khurana and Khurana win an award from Corporate Intl Magazine

We are pleased to announce that our firm Khurana and Khurana Advocates and IP Attorneys has been chosen as the winner of 2013 Corporate Intl Magazine Legal Award for the category of ‘IP  Patents Law Firm of the Year in India’.

Since 2005, Corporate Intl has been firmly established as one of the leading monthly titles for business leaders, professional advisers and providers of finance throughout the world.

The Corporate INTL Awards value those who have been active in the year 2012 and have demonstrated superiority in terms of client service and legal knowledge. All award winners have been chosen through processes of public nominations and detailed research looking at service range, business type, geographical location, how the business operates and the expertise each law firm can offer to clients and companies in their respective practice areas. The firms then are reviewed by an independent awards panel that consists of business leaders, experts in the relevant field of law and the editor of Corporate INTL Magazine. More information can be seen at http://www.corp-intl.com

Khurana & Khurana, Advocates and IP Attorneys (K & K) is a full service Intellectual Property Law Firm. K & K was formed with a very firm focus of providing End-to-End IP Legal Services in a manner which is corporate centric. K & K works closely with its sister concern “Institute of Intellectual Property Research and Development (IIPRD)”, both of which supplement each other in order to provide end-to-end IP Legal and Commercialization/Licensing services to the corporate world. They together focus on creating immense IP value for the clients.

We thank you for your immense support and hope we continue to measure up to our client expectations.

Follow us on Twitter: @KnKIPLaw .

Multi Time Machine v. Amazon.com

No one can resist shopping online in today’s busy times. Online retailing is one of the low costing and productive methods of earning more profits without much effort put in. Take Amazon for example. Amazon, in a bid to gain potential consumers, display alternative products when they look for the initial product they liked. These complementary products, very often can turn into competitive products by showing other brands selling the same good. This move boomerangs on the brand owner as very often the consumer can be lured into buying the competitor’s product, when their intention was not so.

Take the case of Multi Time Machine, Inc. v. Amazon.com, 2013 WL 638888 (C.D. Cal. Feb. 20, 2013)

Multi Time Machine (MTM), the plaintiff, makes expensive “military and tactical” watches and tightly controls its distribution channel to prevent resales on Amazon. Hence, when potential customers visited Amazon and looked for a product ‘MTM Special OPS’, Amazon’s search results did not procure any result for MTM products due to their distribution channel norms. Instead, on searching for MTM products, the search results showed the watches that belonging to MTM’s competitors, like Luminox and Chase-Durer.

Hence, it can be said that Amazon merchandises its customers.  MTM sued Amazon for trademark infringement. It was a battle on the terms of owner v. retailer lawsuit for merchandising competitor’s products.  This cannot be a typical trademark infringement as Amazon is just abiding by the rules set for them.

The Court emphasized on the fact that Amazon did not create any likelihood of confusion among potential consumers. Simply by posting products of different brands, would not amount to any infringement. The search results page prima facie explains to the consumers that they are spoilt for choice. An illustrative analogy is provided by the Court:

“the instant situation does not appear to be a case of palming off in the traditional sense. It is akin to the consumer asking for a Coca-Cola and receiving a tray with unopened, labeled, authentic cans of Pepsi-Cola, RC Cola, Blue Sky Cola, Dr. Pepper, and Sprecher Root Beer, and a copy of Coca Kola: The Baddest Chick, by Nisa Santiago. This is a substitution, but given the context it is not infringing because it is not likely to confuse.”

In legal parlance, the doctrine of palming off is applied to the particular facts of a case in which the defendant is accused of engaging in Unfair Competition against the plaintiff.

In the present case, the potential consumers would definitely understand the difference between competing brands shown on the search results page. The Court held that merchandising by online retail stores of its search results does not violate any Trade Mark Law.

While any Trade Mark owner may not be happy with the competitors being displayed on any retail store, be it online or offline, there is nothing much that he can do to prevent the same.

About the Author: Ms. Madhuri Iyer, Trade Mark Attorney at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com

Follow us on Twitter: @KnKIPLaw .

An analysis on comparative advertising

Comparative advertising means comparing different brands on price, services and other factors and focusing on advertising one of the brands in a way to show how their rivals are inferior as compared to it. This comparison would be very obvious to the audience due to its explicit comparison.

The Federal Trade Commission (USA), defined comparative advertising as “advertisement that compares alternative brands on objectively measurable attributes or price, and identifies the alternative brand by name, illustration or other distinctive information.” The case Gillette Australia Pty Ltd. v Energizer Australia Pty Ltd. (2002) 193 ALR 629 seconded this definition.

The types of comparative advertising can vary from evaluating one single attribute in one product with the same attribute in another product, but absent in other products that exist in their relevant market. The focus of the advertising would first be on how the potential customer would rely on seeing it and be of the belief that the superior product is indeed the right choice as compared to the inferior product shown in the commercial. The evaluation should also be convenient and easy to measure. The next criteria would be remembrance level. The consumer should not put an extra effort in recalling about the advertisement.

Comparative advertising should not be confused with parody advertisements as in the case of parody, a fictional product is made as a spoof of the original product. Here, the competitor is not even blatantly named whereas in comparative advertising, both the brands are clearly named. Further, comparative advertising could be indirect or direct. The main intention should successfully compare, associate and differentiate the two competing brands.

One type of comparative advertising is called disparaging advertising. This method of advertising is a mockery at a brand which can sometimes appear scandalous or baseless.  Potential consumers would not respond to advertisements if they believe the substance in it is misleading or deceptive. It is believed that disparaging advertising does not amount to trademark infringement because it is not technically used as a trademark. This has not been legislated against in Australia. USA, China and Japan have taken up this concept under Unfair Competition Laws. In China, the trademark system works on the concept of first to register basis in order to protect their mark.

In the USA, comparative advertising is regulated through stringent federal, state, local laws as well as self-regularly codes of conduct. The Federal Trade Commission is the primary federal agency responsible for regulating public advertisements. It regulates advertising by prescribing rules under the Federal Trade Commission Act, investigating suspected violations of the said Act and governing lawsuits filed against companies conducting illegal activity. Additionally, the authoritative agency would be brought into the picture according to the product, i.e. the Food and Drug Administration (FDA) would have the authority to oversee advertising claims made to their industry specific products. Additionally, Section 43(a) of the Lanham Act [(15 U.S.C. 1125(a)] protects consumers and competitors against false advertising and false designations of origin.

Apart from these civil remedies, a demand letter can be sent to the competitor directly instructing him to take the advertisement down. The take down request can even be sent to the media outlet displayed that advertisement. A litigation suit, apart from the above federal authorities, can be filed in the NAD  (National Advertising Division) too.

Coming closer home, we saw a series of advertising rivalries between Pepsi-Coke (Nothing official about it, remember?) ,the Complan-Horlicks war (Both the companies ended up in denigrating their competitor’s product, while running advertisements for their own product) or Rin-Tide (Where Hindustan Unilever who’s product is Rin, released an advertisement which makes Procter & Gamble’s Tide look inferior)

Here is a look at a case study:

In the case, ITC Ltd. v. Punchgini (482 F.3d 138 (2d Cir. 2007) ITC operated a “Bukhara” restaurant in India and sold “Dal Bukhara” packaged foods in the U.S. Punchgini operated a “Bukhara Grill” restaurant in the U.S. ITC’s claim was that the defendants implied that their restaurant was affiliated with ITC’s products and this constituted as false advertising. The lower court dismissed ITC’s claims for lack of any substantial ground.

The U.S. Court of Appeals for the Second Circuit affirmed this decision and held that ITC’s mere plans of opening “Bukhara” restaurants in the U.S. did not give rise to any claim. Since Punchgini (the defendants) were not comparing their restaurants to ITC’s packaged food products, ITC’s use of “Dal Bukhara” name on its products, did not exactly amount to any claim of false advertising.

In conclusion, it is one of those concerns where the legal team works in close connection with the marketing team. It is imperative to keep a close watch on this issue so as to prevent any misuse by defamation or any innuendo of negativity. This has ironically disturbed the credibility and innovative use of advertising. This negativity, surely brings better recall to a potential consumer, but in the hindsight, it can differ from person to person.

About the Author: Mr. Mohinder Vig, Trade Mark Attorney at Khurana & Khurana and can be reached at: Trademark@khuranaandkhurana.com

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