Daiwa Pharmaceuticals Co Ltd. Vs Daiwa Pharmaceuticals Pvt. Ltd.

Interstate Transfer of Suit in Patent Infringement dispute

Introduction:

The case at hand involves patent litigation between FMC and NATCO, encompassing multiple legal fora including the High Court of Delhi and the District Court in Chandigarh. Here I aim to provide a detailed analytical examination of the legal implications and rationale behind the transfer of suits from the District Court to the High Court of Delhi by the Hon'ble Supreme Court of India.

Background:

FMC initiated patent infringement suits against NATCO before the High Court of Delhi, with NATCO responding by filing counterclaims. Subsequently, FMC filed three additional suits against NATCO before the District Court in Chandigarh, leading to a fragmented legal landscape with parallel proceedings in different jurisdictions. Complicating matters further, the suits involved overlapping claims pertaining to the same patent, IN298645, with a concurrent revocation petition regarding claim No.12, which was also subject to the suits before the District Court.

Legal Analysis:

The central issue before the Supreme Court was the consolidation of litigation concerning the same patent and involving identical parties across multiple forums. The court recognized the potential for conflicting judgments, inefficient adjudication, and forum shopping inherent in such a scenario. Therefore, the court invoked its inherent jurisdiction to transfer the suits from the District Court in Chandigarh to the High Court of Delhi to ensure judicial efficiency, consistency, and avoidance of multiplicity of proceedings.

Implication:

The Supreme Court's decision to transfer the patent infringement suits from the District Court in Chandigarh to the High Court of Delhi exemplifies a judicious exercise of judicial authority to promote efficiency, consistency, and fairness in multi-forum litigation. By prioritizing the principles of jurisdictional unity, avoidance of forum shopping, patent law consistency, and judicial efficiency, the court advanced the interests of justice and upheld the integrity of the legal process.

The Case Discussed:

Case Title: Daiwa Pharmaceuticals Co Ltd. Vs Daiwa Pharmaceuticals Pvt. Ltd.
Judgment/Order Date: 16.04.2024
Case No: Comm IP Suit No. 82 of 2023
Neutral Citation: 2024:BHC:OS:6232
Name of Court: Delhi High Court
Name of Hon'ble Judge: R.I.Chagla,H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman
IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com
Ph No: 9990389539

Daiwa Pharmaceuticals Co Ltd. Vs Daiwa Pharmaceuticals Pvt. Ltd.

Who is first in the world, is the Ultimate Test in Trademark Dispute

Background:

The case under consideration revolves around the assertion of trademark rights by the Plaintiff in the Indian market, despite the absence of actual use of the mark within India. The central contention raised by the Plaintiff pertains to the recognition and reputation of their mark in the global pharmaceutical market, which, they argue, extends to India by virtue of transborder reputation.

Key Legal Analysis:

The crux of the Court's ruling lies in its recognition of the principle that the absence of local use does not necessarily preclude the protection of trademark rights, especially if the mark enjoys transborder reputation. This principle finds resonance with established international norms, particularly the TRIPS Agreement, which acknowledges the importance of protecting trademarks with significant reputation beyond national borders.

Who is First in the World Market , is the Test:

The Court’s assertion that being first in the world market can confer protection even in the absence of local use underscores the recognition of the global interconnectedness of markets, particularly in industries where innovation and reputation play pivotal roles. In the pharmaceutical sector, where advancements in medical sciences are shared internationally, the dissemination of information through various channels such as advertisements, publications, and R&D activities can contribute significantly to the establishment of transborder reputation.

The judgment acknowledges the unique characteristics of the pharmaceutical industry, where medical practitioners, including doctors and researchers, actively engage in global exchanges of knowledge and information. The Court recognizes that the reputation of pharmaceutical products often transcends national boundaries due to the reliance of medical professionals on global advancements and research findings.

Even through advertisements, publications, and promotional activities, trans border reputation can be established.

Furthermore, the Court's emphasis on the liberal interpretation of the test of trans border reputation reflects a pragmatic approach to accommodate the complexities of modern commerce. By considering various forms of evidence, including advertisements, publications, and promotional activities, the Court acknowledges the multifaceted nature of reputation building in the pharmaceutical sector.

The Case Discussed:

Case Title: Daiwa Pharmaceuticals Co Ltd. Vs Daiwa Pharmaceuticals Pvt. Ltd.
Judgment/Order Date: 16.04.2024
Case No: Comm IP Suit No. 82 of 2023
Neutral Citation: 2024:BHC:OS:6232
Name of Court: Delhi High Court
Name of Hon'ble Judge: R.I.Chagla,H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman
IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com
Ph No: 9990389539