Novartis Ag Vs Natco Pharma Limited and another

The Locus of Pre-Grant Patent Opponent in Patent Examination Process

Introduction:

The realm of patent law is characterized by a delicate balance between fostering innovation and ensuring that patents are granted on meritorious grounds. Central to this balance is the mechanism of pre-grant opposition, designed to facilitate a rigorous examination of patent applications. This article delves into the nuanced legal principles governing pre-grant opposition, emphasizing its facilitation role in the examination process and delineating its limitations.

The Division Bench, High Court of Delhi , Comprising of Hon'ble Judges namely Shri Yashwant Varma and Shri Dharmesh Sharma was having an occasion to answer this issue while passing the Judgement dated 09.01.2024 in Appeal bearing LPA No. 50 of 2023 titled as Novartis Ag Vs Natco Pharma Limited and another, delved into the critical examination of the order dated 14.12.2022 passed by controller of Patent , which allowed certain amendments and ultimately resulted in grant of Indian Patent. IN414518. This grant of Patent to Novartis subsequently led to litigation. The Hon'ble Division Bench, High Court of Delhi rejected the argument of the pre grant Opponent that the same had any right to be heard in Patent Examination process. Thereby  affirmed the order of controller , granting the subject matter Patent.

Background:

Novartis AG was the Applicant of the subject matter patent IN‘518, originated from PCT application no. PCT/US2006/043710 dated 08.11.2006, which was filed as Indian national phase application bearing no. 4412/DELNP/2007 on 08.06.2007 before the Controller of Patents. Natco and few other entities were pre grant opponent. The subject matter order dated 14.12.2022 passed by the controller which resulted in filing of the subject matter writ and subsequent thereto the present Letters Patent Appeal , whereby certain amendments in Indian Patent Application No. IN4145 were allowed without granting any opportunity to pre grant opponent , to be heard. 

The crux of the controversy lies in the alleged violation of the principles of natural justice. The opponent contended that the order permitting amendments to the patent application was issued without granting them a fair hearing. Specifically, all five pre-grant opposition hearings had concluded on 03 November 2022. Despite this, the Controller of Patents directed the applicant to carry out amendments, which were eventually allowed on 14.12.2022.

The Core Legal Question:

The pivotal issue at hand is whether an opponent possesses the right to participate in the patent examination process, especially when amendments are under consideration. Stated differently, does the opponent have a stake in the examination process, mandating their participation when modifications to the patent application are being evaluated? 

Judicial Interpretation:

The Hon'ble Division Bench's ruling provided a nuanced interpretation of the relevant legal provisions. According to Rule 55(5), the right of hearing is primarily associated with the adjudication and disposal of the representation for opposition. The court opined that conferring an opportunity for a hearing at the representation stage does not automatically translate to an inherent right for the opponent to participate in Patent examination process.

Furthermore, the court elucidated that while pre-grant opposition undoubtedly aids the Controller in decision-making, it does not ipso facto grant opponents an inherent right to participation or an audience during the Patent examination process. This interpretation upholds the procedural autonomy of the Controller in conducting examinations while balancing the interests of both applicants and opponents.

 Implications:

it is imperative to understand that the representation for opposition is not inherently adversarial or contentious. Instead, its primary objective is to aid and facilitate the examination of the patent application. This facilitative role underscores the constructive intent behind pre-grant opposition, which aims to ensure that patents are granted based on valid and meritorious grounds.

 The scope and limitations of pre-grant opposition are circumscribed by Section 25(1) of the relevant statute. This provision specifies the grounds on which opposition can be raised, thereby confining the opposition's ambit to statutory parameters. Consequently, any challenge raised by an opponent must align with the grounds delineated in Section 25(1), ensuring that the opposition remains tethered to statutory constraints.

The Division Bench's interpretation provides clarity on the locus of a pre-grant patent opponent within the patent examination framework. By distinguishing between the stages where opponents have a right to be heard, such as during pre-grant opposition, and stages where their participation is not mandated, the court ensures a balanced and efficient patent examination process.

The Concluding Note:

Pre-grant opposition serves a pivotal yet circumscribed role in the patent examination landscape. Its facilitative nature aims to aid the Controller in conducting a holistic examination of patent applications, ensuring adherence to statutory criteria and principles of natural justice. However, this role is not without limitations, as evidenced by the Court's observations emphasizing the pre grant opponent's restricted right to intervene in the process of grant of Patent only by way of pre grant opposition , however the same has no right to be heard in examination process of the Patent, which is solely the domain between Controller of Patent and the Applicant for Patent. 

The Case Law Discussed:

Case Title: Novartis Ag Vs Natco Pharma Limited and another 

Date of Judgement/Order:09.01.2024

Case No. LPA 50/2023 

Neutral Citation: 2023:DHC:84:DB

Name of Hon'ble Court: Delhi  High Court

Name of Hon'ble Judge: Yashwant Varma+Dharmesh Sharma, H.J. 

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Pespsico India Holding Vs Kavitha Kuruganti

Mistake of Styling a Candidate Variety as 'New': A Remediable Oversight

Abstract:

The issue surrounding the mis classification of a candidate variety as 'New' instead of extant variety, within the agricultural or botanical realm often invokes questions of procedural correctness, legal implications, and administrative flexibility. This article delves into the analytical assessment of the consequences of such an error, particularly in light of the Registrar's discretion to process it under the Extant category.

Introduction:

The nomenclature and classification of agricultural varieties play a pivotal role in ensuring systematic cataloging, research, and development within the agricultural sector. An inadvertent mistake in such categorization can lead to various administrative and legal repercussions. However, the key question remains: Is the mistake of styling a candidate variety as 'New' an irreparable error, or can it be remedied without fatal consequences?

Understanding the 'New' Category:

In agricultural contexts, designating a variety as 'New' implies a set of criteria and implications. Such a classification often denotes that the variety has unique characteristics or distinctions that differentiate it from existing or 'Extant' varieties. This categorization influences licensing, rights, and commercial implications associated with the said variety.

Implications of Misclassification:

Registrar's Discretion and Administrative Flexibility**

It's pivotal to consider the Registrar's role and discretion in such matters. The Registrar, as an administrative entity, possesses the authority and flexibility to interpret, rectify, or reconsider classifications based on the merits of the case.

In the given scenario, the Registrar's decision to process the candidate variety as an 'Extant' category indicates an exercise of this discretion. Such a decision underscores the administrative flexibility inherent in regulatory processes, enabling corrections to genuine errors without compromising overarching objectives.

Remediable Oversight: Legal and Practical Considerations:

The decision to treat the misclassified variety as 'Extant' aligns with pragmatic and equitable principles. It rectifies the inadvertent error, ensuring that the variety is subject to appropriate regulations, research, and commercial dynamics without the disproportionate implications of the 'New' categorization.

The concluding note:

The inadvertent mistake of styling a candidate variety as 'New' underscores the complexities and nuances inherent in agricultural classifications. While such errors demand scrutiny and rectification, they need not result in fatal consequences, especially when administrative entities like the Registrar exhibit flexibility, discretion, and a commitment to equitable resolutions. The decision to process the variety as 'Extant' exemplifies a balanced approach, prioritizing fairness, practicality, and the overarching objectives of agricultural regulation and development.

Case Title: Pespsico India Holding Vs Kavitha Kuruganti

Date of Judgement/Order:09.01.2024

Case No. LPA 590/2023

Neutral Citation: 2023:DHC:83:DB

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Yashwant Varma+Dharmesh Sharma, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

JRPL Riceland Vs Neeraj Mittal

Analysis of Trademark Infringement: ‘Biryani King’ Vs. ‘Biryani King XXXL

Introduction:

The case at hand involves a dispute between a plaintiff claiming ownership over the registered mark ‘Biryani King’ and a defendant using a deceptively similar mark, ‘Biryani King XXXL’. The central issue revolves around whether the defendant's use of the mark infringes upon the plaintiff's established rights.

Legal Framework:

Under trademark law, the proprietor of a registered trademark enjoys exclusive rights to use the mark in relation to the goods or services for which it is registered. The primary objective is to prevent consumer confusion and protect the reputation and distinctiveness of established brands.

Comparison of Marks:

Upon a visual and phonetic comparison, it is evident that the marks 'Biryani King' and 'Biryani King XXXL' share substantial similarities. The addition of 'XXXL' does not sufficiently distinguish the defendant's mark from the plaintiff's registered mark. Such similarity is likely to cause confusion among consumers, leading them to believe that the goods originate from the same source or are affiliated in some manner.

Similarity of Goods:

Another critical aspect is the similarity of goods for which the marks are used. Both parties are involved in the sale of rice. The overlapping nature of the goods amplifies the likelihood of confusion among consumers. Courts often consider the relatedness of goods or services when determining the likelihood of confusion, and in this instance, the similarity in goods strengthens the plaintiff's case.

Ex Parte Ad Interim Injunction:

An ex parte ad interim injunction is a provisional remedy granted to a party before a full trial on the merits. In the present case, the court found that the plaintiff had demonstrated a prima facie case of trademark infringement. The nearly identical marks used in relation to similar goods created a strong presumption of likelihood of confusion, warranting immediate injunctive relief to prevent further harm to the plaintiff's rights and potential damage to consumers.

The Concluding Note:

In light of the foregoing analysis, the court's decision to grant an ex parte ad interim injunction in favor of the plaintiff appears to be well-founded. The substantial similarities between the marks and the relatedness of goods establish a compelling case for trademark infringement. This case underscores the significance of protecting intellectual property rights and preventing consumer deception in the marketplace.

The Case Law Discussed:

Case Title: JRPL Riceland Vs Neeraj Mittal

Date of Judgement/Order:04.01.2024

Case No. CS(COMM) 943/2023

Neutral Citation: NA

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Diabliss Consumer Products Pvt.Ltd. Vs Overra Foods

Trademark Infringement and the 'DIABLISS' Vs. 'DIABEAT' Case

Introduction:

The realm of intellectual property rights is vital for fostering innovation and ensuring fair competition. Trademarks serve as essential tools in this framework by providing businesses with exclusive rights over their distinct signs, symbols, and names. The case between 'DIABLISS' and 'DIABEAT' before Delhi High Court epitomizes the significance of protecting these rights and the consequences of their infringement.

Background:

This petition has been filed for removal of the trademark ‘DIABEAT’ bearing registration No.3664179 in Class 30 in the name of the respondent ‘OVERRA FOODS’ and rectification of the Register of Trade Marks  under Sections 57/125 of the Trade Marks Act, 1999. The Petitioner herein /plaintiff, who produces a diabetic-friendly sugar under the registered trademark 'DIABLISS', accused the Respondent/ defendant of marketing a strikingly similar product named 'DIABEAT' earlier filed a Suit before Madras High Court . Not only did the defendant mimic the name, but the packaging and trade dress also bore a close resemblance. Such actions undoubtedly posed a significant risk of consumer confusion, potentially diluting the distinctiveness of the plaintiff's mark. In suit before Madras High Court , interim Injunction was granted in favour of Petitioner herein/Plaintiff therein 

Initial Injunction:

Recognizing the potential harm caused by the defendant's actions, the Madras High Court initially granted an injunction in favor of the plaintiff. This preliminary relief underscored the court's immediate recognition of the apparent similarities between the two marks and the potential for market confusion. This order was the main guiding factor , which resulted in allowance of present rectification petition.

The Doctrine of Malafide and Dishonesty:

Central to the court's subsequent decision was the finding that the defendant's actions were "a mala fide and dishonest attempt to cause confusion in the market." The term 'mala fide' signifies bad faith, implying that the defendant intentionally sought to exploit the reputation and goodwill associated with the 'DIABLISS' mark. Such dishonest conduct is antithetical to the principles underpinning trademark law, which seeks to protect both consumers and legitimate businesses from deceptive practices.

Grounds for Removal of 'DIABEAT' Trademark:

The court's decision to order the removal of the 'DIABEAT' trademark stemmed from a comprehensive assessment of various factors:

1. Likelihood of Confusion: The similarities in the names, packaging, and trade dress between 'DIABLISS' and 'DIABEAT' created a substantial likelihood of confusion among consumers, thereby undermining the distinctiveness and exclusivity associated with the 'DIABLISS' mark.

2. Infringement of Registered Trademark:By replicating key elements of the 'DIABLISS' mark, the defendant infringed upon the plaintiff's registered trademark rights, thereby violating the statutory protections afforded under the relevant intellectual property laws.

3. Prevention of Unfair Competition:Beyond mere trademark infringement, the defendant's actions constituted unfair competition by capitalizing on the plaintiff's goodwill and reputation in the market. Such conduct erodes trust and undermines the principles of fair competition, necessitating judicial intervention to rectify the imbalance.

The Concluding Note:

The 'DIABLISS' Vs. 'DIABEAT' case serves as a poignant reminder of the critical role played by trademark law in safeguarding businesses' intellectual property rights and preserving fair competition in the marketplace. 

The Case Law Discussed:

Case Title: Diabliss Consumer Products Pvt.Ltd. Vs Overra Foods

Date of Judgement/Order:05.01.2024

Case No. C.O. (COMM.IPD-TM) 307/2022 

Neutral Citation: NA

Name of Hon'ble Court: Delhi  High Court

Name of Hon'ble Judge: Anish Dayal, H.J. 

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539