Tag Archives: interim injunction

Injunction against Cipla COPD Drug ‘INDAFLO’ Upheld: Delhi High Court

Reportedly, on an appeal filed by Cipla pertaining to COPD drug INDAFLO, the Delhi High court division bench maintained the interim injunction imposed by single judge against Cipla.  As per the order, Cipla has now been restrained from, inter alia, using, manufacturing, importing, selling any pharmaceutical products etc. containing ‘INDACATEROL‘ or ‘INDACATEROL Maleate‘, alone or in combination with any other compound or Active Pharmaceutical Ingredient (API) leading to the infringement of Novartis patent over INDACATEROL.

Background:

INDACATEROL is a bronchodilator and used in the treatment of the patients suffering from Chronic Obstructive Pulmonary Disease (COPD). The drug has been protected and patented by Novartis under Patent no. 222346 and Novartis markets the drug in India through Lupin under the trade name “ONBREZ”. However, Cipla had launched a generic version of the drug with the trade name ‘UNIBREZ’ to which Novartis filed a trademark infringement suit and Cipla agreed to change the trade name to ‘INDAFLO’. Further, Novartis moved to Delhi High Court to seek permanent injunction against manufacturing and selling of INDAFLO and thereby stopping Cipla to infringe its patent over this drug. Hon’ble Single Judge Justice Manmohan Singh passed order for interim injunction against Cipla, until the decision on the application for compulsory license to manufacture and sell INDAFLO is decided by the respective authority.

Being aggrieved by the order of the Learned Single Judge, Cipla filed an appeal challenging the interim injunction.

Arguments and Observations:

Cipla contended and relied on Section 48 (Rights of the Patentees) of the Patent Act 1970, referring to the wordings as mentioned in Section 48 “subject to other provisions in the Act” to be viewed in the light of Section 83 (dealing with General Principles applicable to working of patented inventions) of this Act.

Taking Sections 48 and 83 of the Patents Act, Cipla argued that since Novartis does not manufacture the drug in India and therefore Novartis does not comply with the principles under Section 83. The court rejected this argument stating that Section 83 has no relevance as far as Rights of Patentees as mentioned under Section 48 is concerned.

As per the bench of two judges, Section 83 begins with the words ‘without prejudice to the other provisions contained in this Act’ meaning that Section 83 is without prejudice to any sections in this Act which includes Section 48 as well and further it has been stated that Section 83 belongs to the different chapter of the Act and therefore this does not have an effect on the rights awarded to the patentee under Section 48 of this Act.

Cipla has further argued that since Novartis does not practice the patent in India as it imports the drug in limited quantities and market through Lupin, Cipla should not be restricted to manufacture and sell its generic version. Taking the 2002 case Telemecanique in light, the bench of the two judges rejected the Cipla’s claim, stating that the working of the patent need not compulsorily imply to only manufacture in India, however, the patent can be exercised by even importing the products. However, the court at this stage concluded that on the basis of data submitted by Novartis, sufficient quantities are imported in India since other drugs for treating COPD are also available in the market and also INDACATEROL does not fall in the category of Life Saving Drug.

Cipla further argued on the grounds of “public interest” that Novartis is not importing the sufficient quantity of the drug and also the drug marketed by Novartis is approx. 5 times as expensive as compared to Cipla’s generic version. Cipla argued that pubic interest would not be served in case the injunction is allowed to remain and contended that while granting an injunction “public interest” has to be considered as one of the four aspects (in addition to prima facie case, balance of convenience and irreparable harm and injury).  To which, the court rejected this plea stating that “public interest” is only one of the four factors to be considered while granting an injunction. Further, the bench brought it to the notice that Cipla in this case till now has not even proved that the grant of injunction against Cipla would really harm the public interest. Whereas, Novartis has duly established the validity of the patent and the revocation of the interim injunction in this case, would cause irreparable injury to Novartis under their rights as Patentees as mentioned under section 48 of Indian Patent Act.

Judgment:

Therefore, the bench maintained the interim injunction passed by Hon’ble Judge Manmohan Singh judgment and refused to interfere with the impugned judgment proving to be a disappointment for Cipla in the respiratory drugs market.

About the Author: Ankur Gupta, Lead Operations-Hyderabad, IIPRD and can be reached at: ankurg@iiprd.com

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Denial of Injunction on the grounds of Acquiescence and Delay by Plaintiffs: SRF Foundation v. Ram Education Society

Devina Choubal, an intern at Khurana & Khurana looks into grounds of denial of injunction by analyzing the recent case of SRF Foundation v. Ram Education Society.

FACTS:

‘SRF Foundation’ plaintiff no.1 is a registered non-profit society engaged in several social and community work including running schools such as “The Shri Ram School”. The name/mark “Shri Ram” is used by the Plaintiff No.1 since 1988 having a good reputation. While plaintiffs No.2 is engaged in setting up schools in India and abroad. With this goodwill, the plaintiffs fulfilled its objective to meet the shortage of good schools by entering into an agreement with “Educomp Infrastructure and School Management” to set up five schools under the name of “The “Shriram Millennium School”. “Ram Education Society” defendant opened “Shri Ram Global Pre School” next to the plaintiff no. 1’s school in Gurgaon. The plaintiffs filed for the registration of trademark, thereafter subsequently withdrawn and the defendant instead registered their mark. The plaintiffs being the real brother of the defendant’s trustee wrote emails to his brother to alert the defendant of the reputation and goodwill of the name/mark and to stop using it. However, the defendant continued to use the name/mark “Shri Ram. The plaintiffs advertised stating that the name/mark of the school does not belong to them. Thereupon, the defendant’s lawyer sent a legal notice to the plaintiffs to withdraw the advertisement and to render public apology. The plaintiffs filed a suit for permanent injunction, passing off and account of profits in the Delhi High Court and also filed an application seeking interim injunction. The Hon’ble High Court passed an order with respect to interim injunction which is discussed in detail as below. The complete order can be accessed here

ARGUMENTS BY THE PLAINTIFFS:

  • It was contended by the plaintiffs that the inherent right to use the name “Shri Ram” rests with each member of the Shri Ram family but such a right is subject to restricting oneself to its domain of business and not encroaching upon others rights. They have no objection if the said mark is used by the defendant in other activities or services but not this activity, as they have being using the name/ mark “Shri Ram” for almost 25 years, the reason being they have goodwill in these services, leading to monopoly over the name/mark. Though the plaintiff and the defendant belong to the same family, still the use by the defendant hampers the plaintiff’s reputation. Because of passing off the services of the plaintiffs by the defendant, the public are confused about which school belongs to whom. Thus, there is no bonafide use of the name/mark. The use of “Shri Ram” in the name/ mark causes confusion and is deceptively similar.
  • The plaintiffs further contented that there is a prior use of the name/mark by them, as the name/mark has been used by them extensively for many years before the defendant.

ARGUMENTS BY THE DEFENDANT:

  • There exist parallel rights to use the name/ mark, thus, the defendant is protected under the legacy of the Late Shri Ram Family. The defendant and the plaintiff share a common family name. Therefore, there cannot be a claim of any proprietary right or monopoly by the plaintiffs. The defendant’s schools are “Shri Ram Global School”, “Shri Ram Centennial School”, “Shri Ram Global Pre School” which is distinctive from Plaintiffs, which are “The Shri Ram School” and “Shri Ram Millennium School” in terms of different suffix and logos. Therefore there is a bonafide use of the mark by the defendant and the plaintiffs cannot have monopoly rights over the mark “Shri Ram”. Also it was further contended by the defendant that the name/mark is not deceptively similar or confusing as it can be distinguished because of different logos & suffix, as stated above. It was further submitted that the email dated 28th September, 2011 stated that there is no objection/ admission on the part of the plaintiffs to running of the schools by the defendant. The said email is as follows: – “I want to mention that if you ever wanted to divest or reduce your shareholding, you would then be reduced to minority shareholding in your company. You must remember that the ‘Shri Ram’ brand might then go to wrong outsiders. One would have no control over how they would use this brand.”
  • The defendant did not deny the prior use by the plaintiffs but they rather denied an exclusive proprietorship, being aware about the plaintiffs having established the schools before them. However, the defendant represented by Mr. Anand, after becoming aware of the fact that the name/mark existed before the use by the plaintiffs as the Shri Ram School in Mawana, UP established by the family’s relatives, they argued on the contention of no prior use by the plaintiffs.

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COURT OBSERVATIONS & JUDGEMENT:

The elements of passing off:-

In order to succeed in an action of passing off, 4 main requirements have to be satisfied by a party who intends to seek the relief of injunction.

  • Prior use;
  • Party who is claiming right must be the proprietor of the mark;
  • Confusion & deception;
  • Delay, if any.

In respect of the first and the second requirement the defendant already approved of the prior use by the plaintiffs though denying the exclusive right over the mark/name. The Hon’ble Judge was brought to notice by the defendant about no such written document existing which tells that the plaintiffs have an exclusive right. However, the plaintiffs have a reputation and no other family member though involved in contribution to education have acquired such goodwill, for the simple fact that the operation of Mawana School started by the Shri Ram family relatives prior to the use by the plaintiffs is limited to the place as pointed out by the plaintiffs and thus considered by the Hon’ble Court.

While in respect of third requirement, it was held that the defendant adopted the trademark even though the plaintiffs has been using it since 23 years, thus, creating confusion by starting school with the name/mark “ Shri Ram” in the same vicinity as that of the plaintiffs. Therefore, the name/ surname being distinctive is protected as per law.

The delay of about 3 years in approaching the court was because the plaintiffs though being aware about the use of “Shri Ram” by the defendant, they did not take any action against them. Thus, there was a delay for a considerable amount of time leading to the applicability of principle of acquiescence. The reason given by the plaintiffs was of proximity of relation between the founding members of the plaintiff and defendant because they are real brothers and the plaintiffs tried to warn and end the matter amicably.

The similarity of marks:-

The Judge observed that the parties have Shri Ram in common and the same was an essential part of their services. It was held in Himalaya Drug Company v/s M/s SBL Ltd. that the essential features of the mark if they are same then the logos are deceptively similar. The mark “Shri Ram” is also used by the defendant like the plaintiffs. Therefore it is deceptively similar.

The admission by the plaintiffs:-

It was further held that the admission made by the plaintiffs cannot operate as an estoppel against the person making it.  As held in Gulabchand vs. Bhaiyalal, AIR 1929 Nag 343. There cannot be an estoppel against the law or statutory provisions. When one is concerned with the statutory right or constitutional guarantee, there cannot be any estoppel against the same.

Bonafide Use:-

It was observed that the “bonafide use” as per the Section 35 of the Trademark Act, 1999 is not to be considered in the present case because the defendant’s school is started in the vicinity of the plaintiffs and they issued licenses and appointed franchises despite warnings from the plaintiffs.

CONCLUSION:-

The Hon’ble Court hel that the defendant to display the disclaimer while continuing the functioning of the schools within 6 months about no connection with the plaintiff’s school. The reason being, the interim injunction of the use of the name/mark would cause hardship to the students and the parents who have already paid fees and taken admission in the defendant’s school. The defendant would be entitled to give bonafide description in the nature that the school is run by Vivan Bharat Ram under the legacy of his grandfather Shri Ram for future schools.

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

India refuses to nod…for Noddy

For the first time, I was forced by my friends to include pictures in my blog.  No wonder, the reason is that they all love the famous character ‘Noddy’.  Well, my reason for writing the blog is to share a very recent and an interesting Trade Mark case in the Delhi High court.

The Plaintiff, Chorion Rights Limited herein referred as ‘Chorion’ filed a case seeking interim injunction restraining the Defendants, Ishan Apparel herein referred as ‘Ishan’ in the High Court of Delhi, India.  Chorion is the owner of the worldwide trademark rights in Noddy including the Noddy name and the character image.  Chorion argued that the Noddy is a popular character since 1940s and submitted the media details featuring Noddy in the court.  Chorion avers that BBC worldwide is it’s licensing and marketing agent in India and cites the “make way for Noddy” television series was first broadcasted in India in 2002.  Chorion claims it registered a global trademark portfolio in various countries.  Chorion further claims to be the owner of the various domain names including Noddy.com, noddyshop.com, noddyshop.eu, jointnoddy.com etc.  Chorion disclosed the annual revenue generated by use of ‘Noddy’ from the year 2001 to 2008.  Chorion in its suit alleges that infact its only one allegation is that the defendants (‘Ishan’) are engaged in the Manufacturing, selling and marketing of cheap and low quality readymade children apparel under the identical Trade Name of ‘Noddy’ in Delhi and NCR.

Meanwhile, Ishan too filed an application for a text ‘Noddy’ along with an image of boys head next to the letter y in the image. Ishan claims it registered the proprietorship for ‘Noddy’ since 1995 and it also showed its first invoice dated 1997. Ishan’s reply to the plaintiff’s interim injunction was strong and noteworthy to discuss here.

The defendant ‘Ishan’ emphasized the point that it cannot be injuncted as it was clearly ‘first past the post’ as far as the question of the use of the ‘Noddy’ character is involved.  Ishan submitted that Chorion merely objected to its Trade Mark application but never pursued it.  Also, the defendants reiterates the contentions in its response to Chorion’s “cease and exist” notice stating that its field of operation is completely different from that of the plaintiff and that there is no overlapping.  Also, the suit by the plaintiff, for the infringement of the copyright ought to be rejected as the artworks being used by the plaintiffs and the defendants are different.

 

Establishing prior use of Mark:

The judge in his judgment referring a case said that this case also involves character merchandising.  He added “when contesting parties hold Trademark registration, their rights are to be determined on the basis of principles applicable for passing off, the most important component of which is establishing prior use of the mark”.  In this case the plaintiff ‘Chorion’ has not adduced any evidence to show prior use in India, it is not even the prior register owner of the said Trade Mark in India. On the other hand, the defendant “Ishan” not only established prior user but also prior registration of its mark from 1995.  Since the plaintiff has failed to show the prior use of the mark before 1995 and their best evidences dates back to 2002, the judge dismissed the case by concluding on account of lack of evidence by the plaintiff, it is not appropriate to injunct the defendants for using their registering trademark.

Take-a-ways from the Author:

The purpose of my blog is to educate the clients about the Trademark Infringement in India.  “Prior use of Mark” in Trademark infringement can be related to “Working of Invention” that act as a ground to obtain compulsory license from Indian Patent office.  My Point here is that the corporates should keep the above case in mind whenever they take business decisions for brand management and have ample prior use evidence for contesting infringement of Trade Mark and/or copyright. The level of bar for establishing a mark as a well-known trade mark is becoming much with specially when the company has no established presence in India.

Case No: IA 8042/2009 in CS(OS) 1154/2009

Author – Veera Raghavan Rajendran,

Senior Patent Consultant, IIPRD.

The Author of the Blog can be reached:  Raghavan@iiprd.com.