Monthly Archives: November 2014

Trademark Row over “Khadi”

As per recent news in The Times of India the  Indian government is bracing itself for a trademark battle against German Company’s “Khadi Naturprodukte” over the handspun fabric that was made a centre piece of India’s freedom struggle by Mahatma Gandhi.   The government has made objections to the use of Khadi as a trademark for selling a range of Indian-origin products, including shampoos, soaps and oils in the European markets and which can be purchased online too.

            Traditionally Khadi is known as handspun and hand woven cloth.  During the period of freedom struggle Mahatma Gandhi started Swadeshi Movement. Khadi was spun from indigenous cotton for making clothes, which were known as khaddar or khadi. Khadi not only gave clothes to the poor masses but also gave them self reliance and ideology for life. Britishers suffered heavy losses when Indians started using Khadi instead of imported expensive clothes and thus khadi made significant contribution in Indian freedom struggle. Undoubtedly Khadi is traditionally Indian and is more than just cloth.

            The Government’s attempt to promote Khadi is facing some trademark hurdles as this brand is registered abroad, in countries such as Germany, Spain and Hungary. It looks similar to the case of Haldi, Basmati rice and Neem where traditional Indian intellectual properties have been registered in the west. Khadi is the latest instance of infringement of intellectual property rights.

The German firm says on its website that “Khadi” is a unique brand for the European market and only exclusively available with us.” Products listed on its website include shampoos, soaps and oils which overlap with what KVIC sells under a similar brand, but the current list doesn’t include fabric.

There is pending application for granting status of ‘geographical indication’ or GI on Khadi to India. This refers to products that are specific to a particular place, such as Darjeeling tea. A few months ago, the Intellectual Property Rights (IPR) Attorneys Association sought a GI tag for Khadi products on behalf of all Indian producers. The application is still pending and if the attempt succeeds, all trademarks granted to khadi for the fabric would get cancelled.

 The department of industrial policy and promotion (DIPP) has suggested KVIC to get international trademark under the Madrid Protocol. A trademark would be a proof of authenticity and will also provide legal protection. Shri BH Anil Kumar, joint secretary in the MSME ministry said “There will be more value added consumables so that khadi does not remain a synonym for a fabric, but connotes a lifestyle”.

“We will put all our force and strength to try and ensure that this trademark is cancelled,” a DIPP official said.

            In order to prevent further infringement of IP in Indian traditional herbs and agricultural produce or in other words to prevent “bio-piracy”, the government of India has formed a Traditional Knowledge Digital Library (TKDL) in order to provide information on traditional knowledge existing in the country.

Finally it seems that Khadi may get its dues, if the KVIC efforts are successful. “Khadi” is not just a “Trademark” but it is an icon of National pride, a symbol of economic independence and a means of employment to thousands people especially in villages where livelihood depends on “Khadi”. Hence it needs to be protected at against IP Infringements.

About the Author: Ms. Pallavi Sharma, Trademark Attorney at Khurana and Khurana, Advocates and IP Attorneys and can be reached at : pallavi@khuranaandkhurana.com

High Court grants interim injunction against online retailer from using L’oreal Trademark

Recently, Delhi High Court passed an interim injunction against an online retailer restraining them from using the name of L’oreal to sell or supply any goods on any website or in any other manner having regard to the L’oreal’s plea alleging counterfeit products having its trademark were being sold/ traded by the online retailer Brandworld through the shopping website Shopclues.com.

L’oreal has filed suit for permanent injunction restraining defendants, on account of infringement, passing off and rendition of accounts against the defendants. Plaintiffs Loreal established in France claimed that they are using the mark “L’oreal” since 1910. It has also been submitted by the counsel for the Plaintiffs that the mark “L’oreal” is registered in major countries of the world and thus has built up a globally valuable trade mark. Hence the plaintiff claimed that they have acquired immense goodwill and reputation by using the said trade mark.

As a matter of fact, Plaintiff observed that certain counterfeit products are being sold by the defendants through online selling under their trademark. Plaintiffs submitted that the alleged goods were purchased and sent for verification and it was revealed that they are counterfeit ones. Thus Plaintiffs prayed for exparte ad interim injunction against the defendants.

Justice G. S. Sistani after perusing the plaint and hearing the Plaintiffs counsel granted ex parte ad interim injunction against defendants restraining ‘defendants, their  directors, principal officers, partners, agents, representatives, distributors, assigns, stockists from using,  manufacturing, marketing, purveying, supplying, selling, soliciting,  exporting, displaying, advertising on the online market place through the  website http://www.ShopClues.com, or any other mode with respect to the impugned  trade mark L’OREAL and L’OREAL formative trade mark’ till next date. Summons issued to the defendants through all possible modes.

The Hon’ble High court also stated that on perusing the facts, the balance of convenience is in favor of Plaintiffs and it is the fit case wherein if the interim injunction is not granted then Plaintiffs will suffer from irreparable loss.

Thus it will be interesting to note the Court’s final verdict in this case in view of the incredible growth of online selling where the sellers are listed by the online website provider to sell their goods to the buyers at discounted prices, which is a growing concern for the manufacturers which making it mandatory for them to be more vigilant on the list of sellers dealing with their goods in order to avoid distortion of prices and preventing dealing of counterfeit products under their mark.

About the Author: Mr. Abhijeet Deshmukh, Trademark Attorney at Khurana and Khurana,  Advocates and IP Attorneys  and can be reached at: Abhijeet@khuranaandkhurana.com

Cipla Files Representation with Govt. Seeking Revocation of Novartis’ Patents

It has been recently reported in Economic times that Cipla has filed representation with the government (Department of Industrial Policy & Promotion) seeking revocation of five patents of Novartis on indacaterol, a respiratory drug for the treatment of chronic obstructive pulmonary disease (COPD) and marketed as Onbrez by Novartis. The central government, under section 66 of the Indian Patent Act, has the power to revoke patent in public interest, after giving patentee an opportunity to be heard.

According to section 66,

“Where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the Official Gazette and thereupon the patent shall be deemed to be revoked.”

Cipla has launched its generic version of indacaterol and alleged that Novartis held patents on indacaterol since 2008-09 without manufacturing in India and importing only in negligible amounts, as a result of which there is an urgent and unmet need to provide this drug to patients at affordable prices. According to Cipla, it has potential to manufacture adequate quantities of the drug to make available in the country.  Cipla’s launched generic version of indaceterol is reported to be 1/5th of the price of Novartis’ Onbrez.

This is the first time that an Indian generic company has asked the government to revoke patents on the ground of public interest under section 66. Otherwise, the revocation has always been sought on grounds under section 64 (for example obviousness, anticipation, insufficient disclosure, violation of section 8, 3d etc.), whether an Indian company has filed a revocation petition or a counter claim in an infringement suit. However, public health and drug price play significant role in deciding a patent’s fate in India especially in context of Compulsory Licensing of patent as it happened in Natco’s case. Even in Roche v. Cipla, public health and pricing issues were considered by the India courts, although the decision at the High Court was based on merits of the case and not in public interest.

It is highly expected that Novartis will take a legal course to challenge Cipla’s launch. Novartis has been very active to protect patents for its one of the blockbuster anti-diabetic drugs vildaglipton in India. Novartis has sought, just a few months ago, quia timet interim injunctions against several Indian generic companies including Glenmark generics, Bajaj healthcare, Cadila healthcare, Alembic pharmaceuticals against alleged patent infringement of vildaglipton even before they actually launched their generic versions and after they obtained marketing approvals from DCGI.

Thus Novartis will most likely file patent infringement suits seeking interim/permanent injunctions restraining Cipla from manufacturing and selling generic version of indacaterol in India.

On another note, Cipla could also have applied to obtain a compulsory license to manufacture and sell indacaterol before launching the drug. All three grounds of granting compulsory license under section 84(1) viz. reasonable requirements of public not being met, drug non-affordability and non-working of patent in India could have been proved by Cipla. According to Cipla, Novartis declared import of meagre 53,844 units for the year 2013 which do not satisfy even 4500 patients annually where there are more than 1.5 crore patients in need of the drug. Cipla also urged the government to consider COPD as an epidemic worthy of being qualified as a “public health crisis” as it claims 50 lakh lives annually in India, which is more than the toll from HIV-AIDS, malaria, cancer and tuberculosis.

Till now, we are not aware of any case in India wherein the government has revoked the patent in public interest under section 66. The outcome of government opinion to revoke said patents is thus eagerly awaited. This would act as precedent for all similar future cases. And if the government decides to revoke the patent under this section, the ongoing conflict between multinational innovator companies and Indian generic companies is going to intensify. Innovator companies criticize that India has weak patent laws not in compliance with international standards, whereas Indian government takes a stand that its patent laws are in compliance with TRIPs standards and are designed to meet the objectives of drug availability, affordability and accessibility.

 About the Author: Meenakshi Khurana, Partner at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: meenakshi@khuranaandkhurana.com