Patel Field Marshal Agencies Vs P.M. Diesels Ltd.

Patel Field Marshal Agencies Vs P.M. Diesels Ltd.-Trademark Rectification and Section 124 of Trademarks Act 1999

Case Title: Patel Field Marshal Agencies & Anr. Vs. P.M. Diesels Ltd. & Ors.

Date of Order: November 29, 2017

Case Nos.: Civil Appeals Nos. 4767-4769/2001

Neutral Citation: N/A

Court: Supreme Court of India

Judges: Justice Ranjan Gogoi and Justice Navin Sinha, H.J.

Introduction: The case of Patel Field Marshal Agencies & Anr. v. P.M. Diesels Ltd. & Ors. decided by the Supreme Court of India on November 29, 2017, is a landmark judgment in the domain of trademark law. The dispute centered around the use of the trademark "Field Marshal," with the respondent claiming infringement by the appellants, who sought to register the mark "Marshal." The primary issue revolved around the interplay of rights under Sections 46, 56, 107, and 111 of the Trade and Merchandise Marks Act, 1958. This judgment provides clarity on procedural aspects related to rectification proceedings and the implications of deemed abandonment of invalidity claims in trademark infringement suits.

Detailed Factual Background of the Case:

Respondent’s Business and Trademark Registration: P.M. Diesels Ltd., the respondent, is the registered owner of the following trademarks:Trademark No. 224879: "Field Marshal" (registered on October 16, 1964).Trademark No. 252070: "Field Marshal" in a specific lettering style (registered on October 4, 1968).Trademark No. 252071-B: "FM Field Marshal" (registered on October 4, 1968).These trademarks were registered for use in relation to diesel engines and machinery, and the respondent had been using these marks extensively in its business, gaining goodwill and recognition in the market.

Appellants’ Business and Trademark Application:The appellants, Patel Field Marshal Agencies & Anr., were engaged in a similar business of manufacturing and trading diesel engines and related machinery. In 1982, the appellants applied to register the trademark "Marshal" for their products. The respondent opposed this application, claiming that "Marshal" was deceptively similar to "Field Marshal," which could lead to consumer confusion and dilute the distinctiveness of its trademarks. 

Respondent’s Infringement Suit (1989):In 1989, the respondent filed Suit No. 1612 of 1989 before the Delhi High Court seeking the following reliefs: Injunction: Restraining the appellants from using the trademarks "Marshal" or "Patel Field Marshal Agencies/Industries." Rendition of Accounts: Seeking damages or profits earned by the appellants through the use of the disputed trademark. Declaration of Infringement: Asserting exclusive rights over its registered trademarks.

The appellants, in their defense, raised the following: Jurisdictional Objections: Challenged the pecuniary and territorial jurisdiction of the Delhi High Court. Validity of Respondent’s Trademarks: Claimed the trademarks were invalid and sought their rectification from the register. Rectification Proceedings by Appellants (1997) While the infringement suit was pending, the appellants filed three rectification applications in 1997 before the Gujarat High Court under Sections 46 and 56 of the 1958 Act, challenging the validity of the respondent’s trademarks.

The grounds for rectification included: Non-Use: Alleging the trademarks had not been used continuously as required by law. Improper Registration: Claiming the marks were descriptive and lacked distinctiveness at the time of registration. The Gujarat High Court dismissed the rectification applications in 1998, and this dismissal was upheld by its Division Bench.

Developments in the Infringement Suit: Interim Injunctions: The respondent sought temporary injunctions in the Delhi High Court, which were initially denied by a Single Judge on grounds of lack of jurisdiction. Appeals and Transfers: The matter was transferred to the Rajkot District Court in 2009 after the Delhi High Court ruled that jurisdiction lay in Gujarat.

Key Issue Before the Supreme Court: The Supreme Court had to address whether, in cases where an infringement suit is pending and the issue of trademark validity has been raised, parties can pursue independent rectification proceedings under Sections 46 and 56, or whether Section 111 restricts such actions to rectification proceedings initiated following the trial court's prima facie findings.

Cases Referred and Discussed:The Supreme Court relied on several precedents and interpretations to resolve the central issue in this case. Below is a detailed analysis of the cases referred to and discussed in the judgment, along with their relevance to the matter at hand.

National Bell Co. v. Metal Goods Mfg. Co. (1971 AIR 898):Context: This case defined the term "person aggrieved" under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958. Court’s Discussion in the Present Case: The appellants relied on this case to assert that they, as parties aggrieved by the registration of "Field Marshal," had an independent statutory right to file rectification applications.The Supreme Court acknowledged this interpretation but clarified that when a suit for infringement is pending, the procedural scheme under Sections 107 and 111 restricts the independent exercise of rights under Sections 46 and 56.

Cotton Corporation of India Ltd. v. United Industrial Bank Ltd. (1983 4 SCC 625):Context: This case discussed the inability of lower courts to restrain parties from pursuing statutory remedies in higher forums.Court’s Discussion in the Present Case: The appellants argued that requiring trial court permission to file rectification applications violated this principle. The Court distinguished the procedural requirement under Section 111, emphasizing that it was not a matter of granting permission but ensuring prima facie tenability before invoking rectification.

Astrazeneca UK Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. (2006 (32) PTC 733):Context: This decision of the Delhi High Court dealt with Section 124(1) of the Trade Marks Act, 1999 (similar to Section 111 of the 1958 Act), focusing on the stay of infringement suits pending rectification proceedings.Court’s Discussion in the Present Case:The Supreme Court noted the Delhi High Court’s view that when a trial court does not find a prima facie case of invalidity, the party can only challenge this finding on appeal.However, the Supreme Court rejected any interpretation allowing parallel rectification proceedings, stating that the procedural scheme must avoid inconsistent outcomes.

Data Infosys Ltd. v. Infosys Technologies Ltd. (2016 (65) PTC 209):Context: This Full Bench decision of the Delhi High Court clarified the abandonment of invalidity pleas under Section 124(3) of the 1999 Act (analogous to Section 111(3) of the 1958 Act).Court’s Discussion in the Present Case:The Supreme Court endorsed this case, holding that the abandonment of invalidity claims in an infringement suit extends beyond the suit and bars subsequent rectification applications.It rejected the argument that abandonment is limited to the context of the suit alone.

B. Mohamed Yousuff v. Prabha Singh Jaswant Singh (2008 (38) PTC 576): Context: This Madras High Court case argued that the right to file rectification under Sections 47 and 57 of the 1999 Act is not contingent on obtaining permission from a trial court under Section 124(1)(ii).Court’s Discussion in the Present Case:The Supreme Court disagreed with this view, reiterating that the legislative intent under Sections 111 and 124 was to channel rectification claims through a controlled process to avoid duplicity and conflicts.

York Products Ltd. v. York International Corp. (AIR 2001 SC 1491):Context: This case addressed the concept of deceptive similarity and the rights of registered trademark owners under the Trade and Merchandise Marks Act, 1958. Court’s Discussion in the Present Case: Although not directly linked to rectification, this case was referenced to reaffirm the exclusive rights granted to registered trademark owners and the procedural safeguards for protecting those rights. 

Key Takeaways from Court’s Use of These Cases: The Court distinguished between the substantive rights of aggrieved parties and the procedural mechanisms controlling their exercise. It emphasized the legislative intent to prevent conflicting outcomes by channeling rectification claims through the trial court's prima facie assessment during infringement suits.

The Reasoning and Discussion by the Court:

Exclusive Jurisdiction of Statutory Authorities on Trademark Validity Principle Established:The Court reaffirmed that the validity of a registered trademark must exclusively be decided by statutory authorities—the Registrar of Trademarks, the High Court, or the Intellectual Property Appellate Board (IPAB)—and not by civil courts.Rationale:Sections 46 and 56 of the 1958 Act confer jurisdiction on statutory authorities to entertain applications for rectification of the trademark register.Sections 107 and 111 further specify that once the validity of a trademark is raised in an infringement suit, the civil court is required to stay the suit and direct the concerned party to approach the statutory authorities for rectification.Key Observation:"The Act mandates that decisions rendered by the prescribed statutory authority will bind the civil court, which is not empowered to decide the question of validity."

Interplay Between Sections 46, 56, and 111 (Rectification and Stay of Proceedings)Principle Established: Section 111 creates a procedural regime that governs rectification claims when an infringement suit is pending. If a party raises the issue of trademark validity, they must follow the process outlined in Section 111. This overrides independent rights under Sections 46 and 56. Key Points: Prima Facie Tenability: The civil court must first assess whether the claim of invalidity is prima facie tenable. Only if the court finds merit in the claim can it frame an issue and grant time for the concerned party to file a rectification application. Stay of Suit: Once rectification proceedings are initiated, the infringement suit remains stayed until a decision is rendered on the validity of the trademark.

Deemed Abandonment (Section 111(3)): If the concerned party fails to initiate rectification proceedings within the prescribed time (three months or as extended), the plea of invalidity is deemed abandoned, not just in the suit but for all future rectification claims.Key Observation:"The legislative scheme under Section 111 ensures that issues relating to invalidity are decided comprehensively in one forum, avoiding multiple proceedings and conflicting decisions."

Parallel Proceedings and Avoidance of Conflicts:Principle Established: Parallel rectification proceedings under Sections 46/56 and 111 are prohibited when an infringement suit is pending. Once the issue of validity is raised in a suit, all rectification claims must adhere to the procedural mechanism of Section 111. Rationale: Allowing parallel proceedings could result in conflicting decisions, one by the civil court and another by the statutory authority. The Supreme Court clarified that the legislature intended rectification issues in pending suits to be governed solely by Section 111 to maintain procedural consistency. Key Observation: "Once a civil court is approached, the rights under Sections 46 and 56 must be exercised through the procedural safeguards under Section 111."

Dismissal of Appeals and Final Decision:Outcome: The Supreme Court dismissed the appellants' appeals, upholding the Gujarat High Court's decision. It affirmed that the appellants had abandoned their plea of invalidity under Section 111(3) by failing to initiate rectification proceedings within the prescribed time.  Implications of the Law Laid Down: Streamlined Litigation: Ensures that trademark validity issues are dealt with comprehensively by statutory authorities, reducing the burden on civil courts. Judicial Finality: Deemed abandonment provisions under Section 111(3) provide certainty to trademark disputes, preventing indefinite challenges to registration. Safeguard Against Abuse:The prima facie assessment ensures only legitimate challenges proceed, protecting trademark owners from frivolous claims.Consistency Across Forums:Prohibits parallel rectification proceedings to avoid conflicting decisions, maintaining the integrity of trademark law.

Conclusion:The judgment in Patel Field Marshal Agencies lays down a clear procedural framework for handling trademark validity challenges in the context of infringement suits. By emphasizing the exclusivity of statutory authorities and the finality of deemed abandonment, the Court has strengthened the integrity of trademark litigation, ensuring efficient and consistent outcomes.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written by: Advocate Ajay Amitabh Suman:[Patent and Trademark Attorney]: High Court of Delhi

Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories

Kaviraj Pandit Durga Dutt Sharma Vs Navaratna Pharmaceutical Laboratories:Difference between Trademark Infringement and Passing off

Introduction:The case of Kaviraj Pandit Durga Dutt Sharma Vs Navaratna Pharmaceutical Laboratories is a landmark judgment concerning trademark law in India. It highlights the interplay between statutory rights under the Trade Marks Act, 1940, and the common law remedy of passing off. The primary question revolved around whether the appellant’s use of the term "Navaratna" infringed the respondent's registered trademarks. In this case Appellant was the Defendant and Rectification Petitioner against registered Trademark of Respondent while Respondent was Plaintiff and registered proprietor of the mark against which Rectification petition was filed by the Appellant:

Plaintiff/Respondent's Business: Navaratna Pharmaceutical Laboratories, a firm established in 1926 by Dr. Sarvothama Rao, manufactured Ayurvedic medicinal products. The firm initially operated under the name "Navaratna Pharmacy" before changing it to "Navaratna Pharmaceutical Laboratories" in 1945. Trademark Usage: Since inception, the respondent used the term "Navaratna" to identify its products, establishing its reputation in the market. Trademark Registration: In 1928, the respondent declared ownership of the "Navaratna" and "Navaratna Pharmacy" marks with the Registrar of Assurances, Calcutta.  Under the Cochin Trade Marks Act, 1944, the respondent registered "Navaratna" (January 31, 1947) and "Navaratna Pharmaceutical Laboratories" (February 17, 1948). These marks were further registered with the Trade Marks Registry in Bombay, as permitted under reciprocal recognition laws (Section 82-A of the Trade Marks Act, 1940).

Defendant/Appellant's Business Activities:Appellant's Business: Kaviraj Pandit Durga Dutt Sharma operated a business manufacturing Ayurvedic pharmaceutical products under the name "Navaratna Kalpa Pharmacy" in Jalandhar, Punjab. Trademark Application: In October 1946, the appellant applied for registration of "Navaratna Kalpa" as a trademark for Ayurvedic preparations. The application was opposed by the respondent, who argued that "Navaratna" was descriptive, lacked distinctiveness, and could not be monopolized. The opposition succeeded, and the registration was refused in 1950.

Initiation of Proceedings:Following the appellant's refusal of registration, both parties initiated legal actions: Respondent's Suit for Infringement and Passing Off: Filed a suit (O.S. No. 233 of 1951) in the District Court, Anjikaimal, seeking: A permanent injunction to restrain the appellant from using "Navaratna" or any similar mark in connection with Ayurvedic products.nProtection of their statutory and common law rights.

Appellant's Application for Rectification: Filed a petition (O.P. No. 19 of 1952) in the High Court of Travancore-Cochin to remove "Navaratna" from the respondent’s registered trademarks, alleging: "Navaratna" was a generic term in Ayurvedic trade and lacked distinctiveness.

District Court's Judgment :The District Court ruled in favor of the respondent, finding: Passing Off: The appellant was not guilty of passing off, as the packaging, get-up, and labels used by both parties were sufficiently distinct to avoid confusion.

Infringement: The word "Navaratna" alone could not be exclusively claimed as it was generic and descriptive in Ayurvedic terminology. However, "Navaratna Pharmaceutical Laboratories" was deemed a valid trademark due to its long and exclusive use by the respondent since before 1937. Relief Granted: The court issued a perpetual injunction against the appellant, limiting it to the use of "Navaratna Pharmaceutical Laboratories."

Appeal to the High Court:The appellant appealed the District Court's decision (A.S. No. 233 of 1959), arguing that: The respondent’s trademark should not have been registered. The findings on passing off and infringement were contradictory. The respondent should disclaim exclusive rights to "Navaratna." The High Court consolidated this appeal with the appellant’s rectification petition (O.P. No. 19 of 1952) and upheld the District Court's judgment.

Appeal to the Supreme Court:Dissatisfied with the High Court's decision, the appellant sought special leave to appeal before the Supreme Court, raising the following concerns: The inconsistency in granting exclusive rights to a descriptive term like "Navaratna." The lack of deceptive similarity between "Navaratna Pharmaceutical Laboratories" and "Navaratna Kalpa." The failure to order a disclaimer under Section 13 of the Trade Marks Act, 1940.The Supreme Court ultimately addressed these issues, providing clarity on acquired distinctiveness, statutory rights, and the distinction between infringement and passing off.

Appellant (Defendant) Submission:Generic Nature of "Navaratna": Argued that "Navaratna" referred to a class of Ayurvedic medicines and was commonly used in the trade. Claimed it lacked distinctiveness and could not be monopolized.No Deceptive Similarity: Asserted that "Navaratna Kalpa" and its packaging were distinct and did not deceive or confuse consumers.  Registration Objections: Contended that combining "Navaratna" with descriptive terms like "Pharmaceutical Laboratories" could not confer distinctiveness under Section 6 of the Trade Marks Act, 1940.

Respondent (Plaintiff) Prior Use and Acquired Distinctiveness: Highlighted the continuous use of "Navaratna Pharmaceutical Laboratories" since 1926, creating distinctiveness and goodwill. Trademark Validity: Argued that under Section 6(3) of the Trade Marks Act, 1940, trademarks in use prior to February 25, 1937, could gain registration despite lacking inherent distinctiveness. Deceptive Similarity: Claimed that "Navaratna Kalpa" was visually, phonetically, and conceptually similar, leading to consumer confusion.

Judgments Referred:

India Electric Works Ltd. v. Registrar of Trade Marks, (1949) 49 CWN 425: The Appellant referred to this decision to emphasize that marks could qualify for registration through factual distinctiveness, provided the evidence demonstrated market recognition.  The Supreme Court distinguished this case by pointing out that the evidence in India Electric Works did not establish distinctiveness, whereas in the present case, the respondent had uncontroverted evidence of market association. 

Citation Discussed: Attorney-General for the Dominion of Canada v. Attorney-General for Ontario, (1897) AC 199:The Supreme Court relied on Lord Watson’s observations that the determination of deceptive similarity is a question of fact requiring judicial analysis of the marks.

Kerly on Trade Marks (8th Edition, p. 407):The Court referred to the principle that in cases involving common elements, marks must be assessed in their entirety, not disregarding shared components.

Citation Discussed: Yorkshire Copper Works Ltd. v. Registrar of Trade Marks, (1954) 71 RPC 150:The Court discussed this case to highlight the distinction between inherent distinctiveness and acquired distinctiveness, rejecting the appellant’s argument that descriptive elements could not gain protection.

Distinction between infringement and Passing Off Action:

Basis of the Legal Remedy: Infringement the Statutory Right: Infringement arises from the violation of a statutory right granted to the registered proprietor of a trademark under Section 21 of the Trade Marks Act, 1940. The essence of an infringement action is the unauthorized use of a registered trademark or a deceptively similar mark for the same or similar goods.Passing Off is Common Law Right: Passing off is a tort rooted in common law, designed to protect the goodwill and reputation of a trader from being misrepresented as associated with another. The claim revolves around preventing one party from passing off their goods or services as those of another.

Key Elements to Prove:In Infringement the plaintiff must establish that:The defendant's mark is either identical to or deceptively similar to the registered trademark. The mark was used in the course of trade for goods or services for which the trademark is registered. No further proof of confusion or deception is required if similarity is evident. In passing Off the plaintiff must prove three elements, commonly known as the "Classical Trinity": Goodwill: The plaintiff has built a reputation in the market for its goods or services. Misrepresentation: The defendant's actions mislead the public into believing that its goods or services are associated with the plaintiff. Damage: The misrepresentation causes harm to the plaintiff’s goodwill or business.

Role of Packaging, Get-Up, and Other Distinguishing Features in  Infringement is Irrelevant: The court emphasized that in an infringement action, the focus is solely on the similarity of the marks. Even if the packaging, get-up, or labeling of the defendant’s product clearly distinguishes its origin, the plaintiff's rights under the registered trademark are still violated if the marks are deceptively similar. While in passing Off action, role of get UP is Critical: The defendant can escape liability by showing that the packaging, get-up, and other distinguishing features are sufficiently different to prevent consumer confusion. Factors like the display of the manufacturer’s name and distinct physical characteristics of the goods play a significant role.

Deceptive Similarity:Infringement:Determined by comparing the two marks based on visual, phonetic, and conceptual resemblance. The focus is on whether the defendant's mark is likely to deceive or confuse consumers. The registered proprietor’s statutory right is paramount, and even minor deceptive similarity can result in liability.In assing Off Action,  The court evaluates whether the overall presentation of the defendant’s goods is likely to mislead consumers into believing they are purchasing the plaintiff’s goods. Factors beyond the trademark itself, such as packaging and marketing strategies, are considered.

Independent Nature of Claims:

Infringement: A registered trademark owner has an exclusive statutory right, making infringement an independent cause of action.No proof of actual deception is required beyond the similarity of marks.Passing Off: Protects business reputation and consumer trust, requiring proof of actual or potential damage caused by the misrepresentation.

Application in the Case:Infringement: The Court found the appellant's mark "Navaratna Kalpa" deceptively similar to the respondent’s registered trademark "Navaratna Pharmaceutical Laboratories." Despite differences in packaging and labeling, the statutory right to the registered trademark was violated.  Passing Off: The respondent’s passing off claim was rejected because the appellant's packaging, labeling, and get-up clearly distinguished its products from those of the respondent. These differences negated the likelihood of consumer deception.

Concluding Note: The Supreme Court clarified that while passing off and infringement may overlap in certain cases, they remain distinct remedies with different requirements. Passing off focuses on protecting market goodwill and consumer trust, whereas infringement safeguards statutory rights associated with registered trademarks, irrespective of external factors like packaging or labeling.

Case Title: Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories

Date of Order: October 20, 1964

Case No.: Civil Appeals Nos. 522 and 523 of 1962

Neutral Citation: AIR 1965 SC 980

Court: Supreme Court of India

Judges: Hon'ble Justice N. Rajagopala Ayyangar, Chief Justice P.B. Gajendragadkar, and Justice J.C. Shah

Advocate Ajay Amitabh Suman,[Patent and Trademark Attorney],High Court of Delhi

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Usha Drager Pvt. Ltd. Vs Draegerwerk Aktiengesellschaft

Increase in valuation of Suit and Amendment of Plaint 

Introduction:The case concerns a petition challenging the dismissal of an amendment application under Order 6 Rule 17 of the Code of Civil Procedure, 1908 (CPC). The petitioners sought to amend the valuation of their suit from Rs. 1 lakh to Rs. 200 crores, citing revelations of the defendant's turnover during the proceedings. The rejection of this amendment formed the focal point of the dispute.

Background:This litigation arose out of disputes concerning a joint venture agreement dated May 9, 1987, and a subsequent Foreign Collaboration Agreement dated February 20, 1990. The suit initially filed in the High Court of Delhi was transferred to the District Court due to changes in pecuniary jurisdiction. The petitioners claimed a permanent injunction and rendition of accounts, initially valuing the relief at Rs. 1 lakh. During the proceedings, the petitioners discovered the respondent's turnover and sought to revise the suit's valuation to Rs. 200 crores, asserting that it was essential for justice.

Original Filing: Suit filed for injunction and rendition of accounts. Valuation: Rs. 1 lakh. Venue: Transferred to the District Court in 2016. Amendment Application: Under Order 6 Rule 17 CPC, petitioners sought to amend the valuation based on evidence suggesting the respondent's turnover exceeded Rs. 1000 crores. Valuation proposed: Rs. 200 crores. Justification: 20% commission on the turnover as compensation.

Dismissal by Trial Court: Application dismissed due to delay (16 years since knowledge of turnover figures). Lack of due diligence and timing (application filed after final arguments commenced). 

Legal Precedents Cited: Petitioners relied on Lakha Ram Sharma vs. Balar Marketing Ltd. and Mount Mary Enterprises vs. Jivratna Medi Treat Pvt. Ltd. to argue that amendments to correct valuation are permissible, even if they shift jurisdiction.

Issues Raised:Whether the petitioners demonstrated due diligence in seeking the amendment under Order 6 Rule 17 CPC?  Can the valuation of a suit be amended at a belated stage, particularly after final arguments have begun? Does the proposed amendment alter the nature of the suit or prejudice the respondents?

Petitioner Submission: Asserted that the amendment was necessary for the suit's proper adjudication. Cited affidavit evidence showing respondent's turnover and argued for a just valuation. Emphasized that courts must adopt a liberal approach to amendments under Order 6 Rule 17 CPC. Argued that rejection based solely on a jurisdictional shift is impermissible. Relied on judgments, including: Lakha Ram Sharma vs. Balar Marketing Ltd., (2008) 17 SCC 671. Mount Mary Enterprises vs. Jivratna Medi Treat Pvt. Ltd., (2015) 4 SCC 182.

Respondent Submission: Opposed the amendment as belated and lacking due diligence. Argued that the turnover figures were available since 2008. Contended that amendments after final arguments would disrupt proceedings. Highlighted judgments such as: Basavaraj vs. Indira, (2024) SCC Online SC 208. South Konkan Distilleries vs. Prabhakar Gajanan Naik, (2008) 14 SCC 632.

Judgment:Court’s Findings: The trial court's dismissal was upheld. The petitioners failed to justify the 16-year delay in seeking amendment despite having access to the turnover figures since 2008. The proposed amendment, if allowed, would disrupt proceedings after extensive final arguments (26 dates). The amendment was not essential for resolving the real controversy as the valuation did not affect the substantive relief sought.

Legal Reasoning: Under Order 6 Rule 17 CPC, amendments are permissible if: They are necessary for adjudicating real controversies. Due diligence is demonstrated. No undue prejudice is caused to the opposing party. The Court emphasized the 2002 amendment’s proviso requiring diligence, which was absent in this case.

Judgments Referred: Lakha Ram Sharma vs. Balar Marketing Ltd. (Liberal approach to valuation amendments unless mala fide). Mount Mary Enterprises vs. Jivratna Medi Treat Pvt. Ltd. (Valuation amendments should not be denied solely due to jurisdictional shifts). M. Revanna vs. Anjanamma (2002 CPC amendment introduced stricter diligence requirements).

Provisions of Law Discussed:Order 6 Rule 17 CPC: Governing amendment of pleadings. Proviso to Order 6 Rule 17 CPC: Restricts amendments post-commencement of trial unless due diligence is shown.  Pecuniary Jurisdiction: Relevant to the jurisdictional implications of valuation changes.

Analysis:The judgment reinforces the principle that amendments, especially post-trial, require strict scrutiny. Petitioners failed the diligence test, rendering their reliance on precedents misplaced. The respondents successfully demonstrated procedural prejudice and delay. The Court struck a balance between procedural integrity and substantive justice, favoring the former in this instance.

Decision:The High Court dismissed the petition, affirming the trial court’s order. No costs were imposed.

Concluding Note: This case underscores the significance of procedural diligence and timeliness in seeking amendments. The judiciary's cautious approach ensures that amendments do not become a tool for delay or jurisdictional manipulation.

Case Details:

Case Title: Usha Drager Private Ltd & Anr. vs Draegerwerk Aktiengesellschaft & Ors.

Date of Order: January 14, 2025.

Case No.: CM(M) 2296/2024.

Neutral Citation: 2025:DHC:368

Court: High Court of Delhi.

Judge: Hon'ble Mr. Justice Ravinder Dudeja.

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney] 

High Court of Delhi

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

J.B. Williams Co Vs. H. Bronnley

J.B. Williams Co Vs. H. Bronnley-:Standard for assessing similarity in trademarks

Introduction:This case revolves around the alleged passing off of shaving soap by imitating the packaging design of the plaintiff's product. The J.B. Williams Company, a prominent American manufacturer of shaving soap, accused the defendants, H. Bronnley & Co. Ltd. and J.H. Williams, of adopting packaging resembling their distinctive maroon-colored, dome-shaped, tin-lined boxes, which were claimed to have acquired a secondary meaning in the market. The court was tasked with determining whether the defendants' actions amounted to unfair competition and passing off.

Background:The concept of passing off protects the goodwill associated with a product by preventing others from misrepresenting their goods as those of another. This case arose when the J.B. Williams Company alleged that the defendants intentionally designed their packaging to deceive consumers into believing they were purchasing the plaintiff's product.

Detailed Facts of the Case: Plaintiffs: J.B. Williams Company, an American corporation, manufactured and sold shaving soap in maroon-colored, dome-shaped, tin-lined boxes.Defendants: H. Bronnley & Co. Ltd., a London-based soap manufacturer, sold similar shaving sticks in packaging alleged to imitate the plaintiff's boxes. J.H. Williams, a chemist in Bournemouth, sold products in packaging supplied by Bronnley & Co., allegedly resembling the plaintiff's.

Claims by Plaintiffs: The maroon-colored boxes with specific design features had acquired distinctiveness, symbolizing the plaintiff's product. The defendants' packaging was calculated to deceive consumers and pass off their goods as the plaintiff's.

Defendants' Defense: The design and color of the packaging were common to the trade. There was no intention to deceive or pass off their products as the plaintiff's.

Issues Raised:Whether the plaintiff's packaging had acquired distinctiveness in the market Whether the defendants' packaging was so similar to the plaintiff's as to deceive consumers? Whether the defendants' actions constituted passing off? 

Plaintiffs Submission: Argued that their maroon-colored, dome-shaped, tin-lined boxes were distinctive and associated with their shaving soap. Presented evidence from trade witnesses to demonstrate that the packaging was recognized in the market as representing their product. Claimed that the defendants' packaging imitated their design, leading to consumer confusion.

Defendants Submission: Contended that the color maroon and the shape of the boxes were common in the trade and not unique to the plaintiff's product. Highlighted that their packaging included distinctive labels and designs, differentiating it from the plaintiff's. Denied any intent to deceive or mislead consumers.

Trial Court: Neville J. dismissed the plaintiff's claims, holding that: The maroon color and dome-shaped tin boxes were common in the trade and not distinctive to the plaintiff's product. The defendants' packaging was sufficiently distinct from the plaintiff's, with no intention to deceive consumers. No evidence of actual deception was established.

Court of Appeal:

The appeal was dismissed with costs. The court, comprising Cozens-Hardy M.R., Fletcher Moulton L.J., and Farwell L.J., held: The plaintiffs failed to prove that their packaging had acquired a secondary meaning or distinctiveness. The defendants were entitled to use common trade features such as maroon-colored, tin-lined boxes. The plaintiffs' claim to a monopoly over such packaging was untenable.

Judgments and Citations Referred:

Schweppes Ltd. v. Gibbens (22 R.P.C. 601)

Discussion: The court cited Lord Halsbury’s statement that in cases of passing off, the question is whether the overall appearance of the product, taken in its entirety, is such that a reasonable person might be deceived. The court applied this principle to evaluate whether the defendants’ packaging, when viewed as a whole, was likely to mislead consumers into believing it was the plaintiff’s product. The court concluded that the defendants’ packaging was sufficiently distinct and not calculated to deceive.

Payton v. Snelling (17 R.P.C. 48) Discussion: This case emphasized that features common to the trade cannot be monopolized unless additional elements create distinctiveness.

Application: The court noted that the maroon color and dome-shaped tin boxes were common trade features. It highlighted that the plaintiffs’ claim to exclusivity over these elements was untenable without additional distinguishing features.

Cellular Clothing Co. v. Maxton & Murray (16 R.P.C. 408) Discussion: Lord Davey’s judgment in this case was referenced to illustrate the difficulty of acquiring monopoly rights over generic or descriptive features.Application: The court drew parallels, stating that the plaintiffs could not claim exclusivity over packaging features (such as maroon-colored tin boxes) that were common in the industry.

Lever v. Goodwin (4 R.P.C. 492) Discussion: This case dealt with the principles of passing off and the requirement to prove intentional deception.Application: The court found no evidence of intentional fraud or deception by the defendants and emphasized that their conduct was within the bounds of fair trading.

Weingarten v. Bayer & Co. (22 R.P.C. 341)Discussion: This case addressed the importance of the overall impression created by the get-up of a product in determining whether passing off had occurred. Application: The court reiterated that the plaintiffs’ packaging lacked distinctive features that could establish a secondary meaning, making it unlikely to deceive consumers.

Court's Discussion on the Citations:

Distinctive Get-Up and Secondary Meaning:

The court emphasized that the plaintiffs failed to establish a distinctive get-up for their product. Referring to Schweppes Ltd. v. Gibbens, the court noted that the overall impression of the packaging must be evaluated. Since maroon-colored, dome-shaped tin boxes were common in the trade, the plaintiffs could not claim a monopoly over these features.

Common Trade Features: The court leaned on Payton v. Snelling and Cellular Clothing Co. v. Maxton & Murray to highlight that trade practices and generic features could not be monopolized. The plaintiffs’ claim to exclusivity over the packaging design was dismissed as it lacked originality and distinctiveness.

Fair Trading and Fraudulent Intent: The court, referencing Lever v. Goodwin, emphasized the absence of fraudulent intent on the part of the defendants. It noted that the defendants’ packaging included clear labels and names, distinguishing their products from the plaintiffs’.

Likelihood of Deception:Referring to Weingarten v. Bayer & Co., the court stressed that passing off requires a likelihood of deception. Since the defendants’ packaging contained distinguishing features and trade witnesses admitted that the differences were noticeable upon inspection, the court concluded that there was no likelihood of deception.

Analysis and Reasoning:

Distinctiveness: The plaintiffs could not demonstrate that their packaging was uniquely associated with their product. The maroon color and tin-lined boxes were established as common trade features.

Consumer Confusion: The court emphasized that passing off requires a likelihood of deception. The defendants' packaging included distinguishing features such as labels and names, mitigating any potential confusion.

Monopoly Claims: The court rejected the plaintiffs' attempt to claim exclusivity over common trade elements, underscoring the importance of fair competition.

Intent to Deceive:The court found no evidence of fraudulent intent on the part of the defendants, further weakening the plaintiff's case.

Decision:The appeal was dismissed. Both defendants were found to have acted within the bounds of fair trade practices. The court awarded costs to the defendants.

Concluding Note:

This case highlights the challenges in establishing passing off claims, particularly when the alleged distinctive features are common in the trade. It underscores the need for clear evidence of distinctiveness and consumer confusion to succeed in such actions.

Case Title: J.B. Williams Company v. H. Bronnley & Co. Ltd. & J.H. Williams

Date of Order: November 24, 1909

Case No.: (1909) RPC 765

Neutral Citation: Not provided

Court: Court of Appeal

Judges: Cozens-Hardy M.R., Fletcher Moulton L.J., Farwell L.J.

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney] 

High Court of Delhi

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Heinz Italia Vs Dabur India Ltd

Heinz Italia Vs Dabur India Ltd- Trademark Infringement and Passing Off: An Examination of "Glucon-D" vs "Glucose-D"

Case Title: Heinz Italia & Anr vs  Dabur India Ltd

Date of Order: 18 May 2007

Case No.: Civil Appeal No. 2756 of 2007

Neutral Citation: 2007 (35) PTC 1 SC

Court: Supreme Court of India

Judges: Hon'ble Justice Shri B.P. Singh and Shri  Harjit Singh Bedi

Introduction:This case revolves around allegations of trademark infringement and passing off brought by Heinz Italia against Dabur India. The dispute concerns the use of the trademark "Glucon-D" and its packaging, which Heinz claims was deceptively copied by Dabur's product "Glucose-D." The Supreme Court of India adjudicated on the issue of granting an ad-interim injunction to prevent Dabur from using allegedly infringing marks and packaging.

Background: Heinz Italia, the successor to Glaxo Laboratories, owns the registered trademark "Glucon-D," which was first registered in 1975. The trademark, along with its goodwill and packaging rights, was assigned to Heinz in 1994. Dabur launched its product "Glucose-D" in 1989 and adopted packaging in 2000 that Heinz alleged was deceptively similar to its own.

The legal battle began when Heinz filed a suit for permanent injunction, accounts of profits, and damages, asserting that Dabur's actions constituted infringement under Sections 29 and 106 of the Trademarks Act, 1958, and copyright infringement under Section 63 of the Copyright Act, 1957.

Trademark Ownership:Heinz Italia owns the registered trademark "Glucon-D," originally registered in 1975 by Glaxo and assigned to Heinz in 1994. The packaging includes a distinctive green color and a "happy family" depiction.Allegations Against Dabur:Heinz alleged that Dabur's product "Glucose-D" used deceptively similar packaging and phonetic resemblance to "Glucon-D," which could mislead consumers.

Initial Proceedings: The Trial Court (2003): Rejected Heinz's application for ad-interim injunction, holding "Glucose" as a generic term and finding dissimilarities in packaging. Punjab and Haryana High Court (2005): Upheld the Trial Court's decision.

Supreme Court Appeal (2007): Heinz appealed against the denial of interim relief, seeking to restrain Dabur from using the disputed mark and packaging.

Issues Raised:  Whether the term "Glucose-D" constitutes a generic term, precluding exclusive trademark right? Whether Dabur's packaging was deceptively similar to Heinz's "Glucon-D" packaging. Whether prior use of the mark by Heinz established its goodwill and reputation in the market? Whether the delay in filing the suit by Heinz precluded the grant of interim relief? 

Submissions of the Parties:

Appellant (Heinz Italia) submission: Prior Use and Goodwill: The trademark "Glucon-D" and its packaging had been in use since 1940 (by Glaxo) and acquired significant goodwill. Deceptive Similarity: The phonetic resemblance between "Glucon-D" and "Glucose-D," coupled with similar packaging, was likely to confuse consumers.

Respondent (Dabur India) submission: Generic Nature of "Glucose": Argued that "Glucose" is a generic term, and no monopoly could be claimed over it. Dissimilar Packaging: Highlighted differences in the depiction of the "happy family" and overall design. Delay in Filing: Contended that Heinz's delay in initiating legal action indicated a lack of urgency.

Key Citations:

Century Traders v. Roshan Lal Duggar & Co. (AIR 1978 Delhi 250):In an action for passing off, the plaintiff must establish prior use of the trademark to secure an injunction. The registration of the mark, while relevant, is secondary to the principle of prior use. The Court relied on this judgment to emphasize that Heinz Italia's trademark "Glucon-D" had been in use since 1940 (by Glaxo) and subsequently by Heinz from 1994. The respondent, Dabur, began using "Glucose-D" much later, in 1989, making Heinz the prior user. This principle was crucial in granting interim relief to Heinz.

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001 PTC 300 SC): This judgment laid down the test for deceptive similarity in trademark cases, focusing on the likelihood of consumer confusion. It emphasized that phonetic similarity and the overall impression created by the marks must be considered. The Court analyzed the phonetic similarity between "Glucon-D" and "Glucose-D," noting that the resemblance was likely to confuse consumers. The similarity in packaging, particularly the color scheme and depiction of a "happy family," further supported the argument of deceptive similarity.

Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142): In cases of passing off, the intention to deceive and the likelihood of consumer confusion are critical factors. If a dishonest intention to exploit the goodwill of an established brand is evident, an injunction should follow. The Court found that Dabur's use of similar packaging and phonetic resemblance suggested an attempt to exploit the goodwill of Heinz's "Glucon-D." This dishonest intention was inferred from the similarities and Dabur's repeated modifications to its packaging.

Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia & Ors. 2004 (28) PTC 121 SC: In cases of trademark infringement or passing off, injunctions should be granted promptly if the plaintiff demonstrates a prima facie case of deceptive similarity. Delay in filing the suit does not defeat the plaintiff's right to protection. The Court rejected Dabur's argument that Heinz's delay in filing the suit (in 2003, despite Dabur's use since 1989) should preclude interim relief. The Court held that the delay did not negate Heinz's right to seek protection for its trademark.

Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd. (2004) 5 SCC 257: The Court held that even if a term is generic, exclusive rights may be claimed if it has acquired a secondary meaning or distinctiveness in the market. While Dabur argued that "Glucose" is a generic term, the Court noted that the addition of "D" and the distinctive packaging had given "Glucon-D" a unique identity in the market. The Court emphasized that generic terms could still warrant protection under special circumstances.

Wander Ltd. v. Antox India P. Ltd. (1990 Supp. SCC 727): Interim injunctions under Order 39 Rules 1 and 2 of the CPC are discretionary and appellate courts should not interfere lightly unless the discretion has been exercised arbitrarily or capriciously. The Court acknowledged this principle but distinguished the present case. Unlike Wander Ltd., where prior use was proven by the defendant, Heinz's long-standing use of "Glucon-D" warranted interference by the Supreme Court to grant interim relief.

J.B. Williams v. H. Bronnley (1909) RPC 765: This judgment discusses the standard for assessing similarity in trademarks and the need for evidence to substantiate claims of confusion. Dabur cited this case to argue that the alleged similarity between the marks and packaging required detailed evidence, which could only be assessed at trial. However, the Supreme Court held that the prima facie similarity and Heinz's established goodwill justified an interim injunction.

Provisions of Law Discussed:

Trademarks Act, 1958: Sections 29 (infringement of trademark) and 106 (remedies).

Copyright Act, 1957: Section 63 (infringement of copyright).

Code of Civil Procedure: Order 39 Rules 1 and 2 (injunctions).

Analysis and Reasoning:

Prior Use: The Court held that "Glucon-D" had been in use long before "Glucose-D," establishing its reputation.Deceptive Similarity: Despite minor differences, the overall resemblance in packaging and phonetic similarity was likely to mislead consumers.Generic Term Argument: While "Glucose" is generic, the addition of "D" and distinctive packaging gave "Glucon-D" a unique identity.Delay: The Court found that delay did not negate the right to protection against infringement.

Decision: The Supreme Court granted an interim injunction in favor of Heinz Italia, restraining Dabur from using the trademark "Glucose-D" and its packaging.

Concluding Note: This case underscores the importance of protecting established trademarks and the goodwill associated with them. It also highlights the Court's role in balancing competing interests while addressing deceptive similarities in trademarks.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Advocate Ajay Amitabh Suman,[Patent and Trademark Attorney], High Court of Delhi

Yamini Manohar Vs. T.K.D. Keerthi 13.10.2023

Yamini Manohar Vs. T.K.D. Keerthi: Pre-Litigation Mediation and the Scope of Urgent Interim Relief under Section 12A of the Commercial Courts Act 2015.

Case Title: Yamini Manohar Vs. T.K.D. Keerthi

Date of Order: October 13, 2023

Case No.: Special Leave Petition (Civil) No. 32275/2023

Court: Supreme Court of India

Judges: Hon’ble Justice Sanjiv Khanna and Hon’ble Justice S.V.N. Bhatti, H.J.

Introduction:The Supreme Court of India, in Yamini Manohar vs. T.K.D. Keerthi, addressed the critical question of whether a suit seeking urgent interim relief can bypass the mandatory pre-litigation mediation under Section 12A of the Commercial Courts Act, 2015. The case provides significant clarity on the interpretation of “urgent interim relief” and the role of courts in ensuring compliance with Section 12A while preventing its misuse.

Background:Section 12A of the Commercial Courts Act, 2015, mandates pre-institution mediation for commercial disputes unless the suit contemplates urgent interim relief. This provision was introduced to promote alternative dispute resolution mechanisms, decongest courts, and expedite dispute resolution. However, the ambiguity surrounding the term “urgent interim relief” has led to inconsistent judicial interpretations, necessitating the Supreme Court’s intervention.

Nature of the Dispute:The respondent filed a commercial suit under the Commercial Courts Act, seeking urgent interim relief.

Application under Order VII Rule 11 CPC: The petitioner moved an application under Order VII Rule 11 CPC, seeking rejection of the plaint on the ground that the mandatory pre-litigation mediation under Section 12A was not exhausted.

Lower Courts' Decisions:Both the District Commercial Court and the Delhi High Court dismissed the petitioner’s application, holding that the suit contemplated urgent interim relief, thereby exempting it from pre-litigation mediation.

Supreme Court Appeal:The petitioner challenged the High Court’s decision before the Supreme Court, arguing that the plea for urgent interim relief was merely a pretext to bypass Section 12A.

Issues Raised? Is the requirement of pre-litigation mediation under Section 12A of the Commercial Courts Act mandatory in cases seeking urgent interim relief? What is the scope of “urgent interim relief” under Section 12A(1) Can courts examine the bona fides of a plaintiff’s claim for urgent interim relief to prevent misuse of Section 12A?

Petitioner’s Submissions: Misuse of Urgent Interim Relief Exception: The plaintiff’s plea for urgent interim relief was a guise to bypass the mandatory requirement of pre-litigation mediation under Section 12A.

Judicial Oversight: Courts must scrutinize whether the plea for urgent interim relief is genuine or merely a strategy to avoid mediation.

Legislative Intent: Section 12A aims to decongest courts and promote mediation, and allowing such exceptions without scrutiny would defeat its purpose. Respondent’s Submissions: Right to Urgent Relief: The plaintiff has the discretion to seek urgent interim relief, and the court’s role is limited to assessing the merits of the relief sought. Compliance with Section 12A: The plea for urgent interim relief exempts the suit from pre-litigation mediation under Section 12A. Precedents: Cited judgments that upheld the plaintiff’s prerogative to seek urgent interim relief without mandatory pre-litigation mediation.

Judgments and Citations Referred:

Petitioner’s References: Patil Automation Private Limited vs. Rakheja Engineers Private Limited (2022 SCC OnLine SC 1028): Held that Section 12A is mandatory, barring cases contemplating urgent interim relief. Kaulchand H. Jogani vs. M/s Shree Vardhan Investment (2022 SCC OnLine Bom 4752): Discussed the need for courts to assess whether a suit genuinely contemplates urgent interim relief.

Respondent’s References: Chandra Kishore Chaurasia vs. R.A. Perfumery Works Private Limited (2022 SCC OnLine Del 3529): Held that courts cannot compel pre-litigation mediation in suits involving urgent interim relief.

Provisions of Law Discussed:Section 12A, Commercial Courts Act, 2015: Mandates pre-litigation mediation unless the suit contemplates urgent interim relief. The term “contemplate” suggests that the plaintiff must deliberate and consider the need for urgent interim relief.

Order VII Rule 11 CPC:Allows rejection of plaints barred by law. Section 80(2) CPC: Permits filing of suits seeking urgent interim relief without prior notice, provided the plaintiff justifies the urgency.

Analysis and Reasoning of the Court:Mandatory Nature of Section 12A: The Court reaffirmed its earlier decision in Patil Automation, holding that Section 12A is mandatory unless the suit contemplates urgent interim relief.  Scope of “Urgent Interim Relief”: The term “contemplate” in Section 12A(1) requires the plaintiff to demonstrate the necessity for urgent interim relief. The Court emphasized that such relief must be bona fide and not a pretext to evade pre-litigation mediation.

Judicial Oversight: Courts have a limited but critical role in assessing the bona fides of a plaintiff’s claim for urgent interim relief. The Court clarified that: If the plea for urgent interim relief is found to be genuine, the suit is exempt from pre-litigation mediation. If the plea is a disguise, the court can reject the plaint under Order VII Rule 11 CPC.

Balancing Legislative Intent and Judicial Discretion: The Court balanced the legislative intent of promoting mediation with the plaintiff’s right to seek urgent relief. It cautioned against allowing plaintiffs an “absolute and unfettered right” to bypass Section 12A by merely framing their suit to include urgent interim relief.

Decision:The Supreme Court dismissed the special leave petition, holding that: The suit genuinely contemplated urgent interim relief, exempting it from pre-litigation mediation under Section 12A.  The lower courts correctly dismissed the petitioner’s application under Order VII Rule 11 CPC.

Concluding Note: This judgment provides much-needed clarity on the interplay between Section 12A of the Commercial Courts Act and the plaintiff’s right to seek urgent interim relief. By emphasizing judicial oversight, the Court has ensured that the legislative intent behind Section 12A is not defeated while safeguarding the plaintiff’s access to justice.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written by: Advocate Ajay Amitabh Suman: [Patent and Trademark Attorney] :High Court of Delhi

Patil Automation Private Limited Vs. Rakheja Engineers Private Limited 18.08.2022

Clarifying the Mandatory Nature of Pre-Litigation Mediation Under Section 12A of the Commercial Courts Act, 2015"

Introduction:The Supreme Court of India addressed a significant issue in M/S. Patil Automation Private Limited and Ors. vs. Rakheja Engineers Private Limited: whether pre-litigation mediation under Section 12A of the Commercial Courts Act, 2015, is mandatory. This judgment clarified the scope and applicability of Section 12A, emphasizing its role in promoting alternative dispute resolution and decongesting the judiciary. The decision has far-reaching implications for commercial litigation and procedural law in India.

Background:The Commercial Courts Act, 2015, was introduced to provide an efficient mechanism for resolving commercial disputes, thereby improving India's business environment. To further this objective, Section 12A was added through the 2018 Amendment, mandating pre-litigation mediation for commercial disputes, barring cases involving urgent interim relief. However, conflicting High Court judgments on its mandatory nature necessitated a ruling from the Supreme Court.

Nature of the Dispute:The respondent filed a commercial suit under Order XXXVII of the Code of Civil Procedure, 1908 (CPC), seeking recovery of ₹1,00,40,291/- along with 12% interest for unpaid dues arising from a commercial transaction.Appellant's Application: The appellants filed an application under Order VII Rule 11 CPC, seeking rejection of the plaint for non-compliance with Section 12A of the Commercial Courts Act, which mandates pre-institution mediation.Trial Court’s Decision:The trial court dismissed the application, holding that non-compliance with Section 12A was not fatal to the suit. It directed the parties to mediation under the District Legal Services Authority.High Court’s Ruling: The Punjab and Haryana High Court upheld the trial court’s decision, emphasizing that procedural rules are meant to advance justice and should not be used to reject suits on technical grounds.Supreme Court Appeal: The appellants challenged the High Court’s decision, arguing that Section 12A is mandatory and failure to comply renders the suit non-maintainable.Issues Raised:Is Section 12A of the Commercial Courts Act, 2015, mandatory? Can a suit filed without adhering to Section 12A be rejected under Order VII Rule 11 CPC? What is the interplay between procedural compliance and the constitutional right to access justice?

Appellants' Submissions: Mandatory Nature of Section 12A: The use of the term "shall" in Section 12A indicates a mandatory requirement. The provision aims to promote mediation and decongest courts, aligning with the legislative intent. Legislative Intent: Section 12A was introduced to enhance the ease of doing business by providing an efficient dispute resolution mechanism. Precedents: Reliance was placed on Bhagchand Dagadusa Gujrathi v. Secretary of State for India and State of Madras v. C.P. Agencies, which held procedural requirements like Section 80 CPC to be mandatory.No Prejudice to Plaintiff: Rejection of the plaint under Order VII Rule 11 does not bar the plaintiff from filing a fresh suit after complying with Section 12A.

Respondent's Submissions: Directory Nature of Section 12A: Section 12A should be interpreted as directory, not mandatory, to uphold the constitutional right to access justice. Substantial Justice Over Technicalities: Courts should prioritize substantive justice over procedural formalities. Flexibility in Mediation:Post-institution mediation, as directed by the trial court, fulfills the legislative intent of Section 12A.

Judgments and Citations Referred:

Appellants' References: Bhagchand Dagadusa Gujrathi v. Secretary of State for India (AIR 1927 PC 176): Emphasized the mandatory nature of procedural requirements. State of Madras v. C.P. Agencies (AIR 1960 SC 1309): Held that procedural compliance is essential for maintaining suits. Madiraju Venkata Ramana Raju v. Peddireddigari Ramachandra Reddy (2018 14 SCC 1): Discussed the implications of non-compliance with statutory requirements. Respondent's References: Kailash v. Nanhku (2005 4 SCC 480): Held that procedural rules should not defeat substantive justice. Ganga Taro Vazirani v. Deepak Raheja (2021 SCC OnLine Bom 195): Held Section 12A to be directory (later overruled).

Provisions of Law Discussed:Section 12A, Commercial Courts Act, 2015: Mandates pre-institution mediation for commercial disputes, barring cases involving urgent interim relief. Order VII Rule 11 CPC: Provides for rejection of plaints that are barred by law. Legal Services Authorities Act, 1987: Governs the mediation process under Section 12A. Analysis and Reasoning of the Court Evolution of Law and Insertion of Section 12A in the Commercial Courts Act, 2015 The Supreme Court, in its judgment in M/S. Patil Automation Private Limited and Ors. vs. Rakheja Engineers Private Limited, provided a detailed discussion on the legislative history and intent behind the insertion of Section 12A into the Commercial Courts Act, 2015. Below is an analysis of how the Court traced the evolution of the law and its context:

Origin of the Commercial Courts Act, 2015:The Commercial Courts Act, 2015, was introduced to address the increasing volume of commercial disputes and to improve the efficiency of the judicial system in handling such cases. The primary objectives were: To facilitate the speedy adjudication of commercial disputes. To enhance India's ranking in the "Ease of Doing Business" index by creating a robust dispute resolution framework. To ensure that commercial disputes of a specified value were adjudicated by specialized courts. Initially, the Act applied to disputes with a minimum monetary value of ₹1 crore. It also provided for the constitution of Commercial Courts at the district level and Commercial Divisions in High Courts with original jurisdiction. The 2018 Amendment to the Commercial Courts Act:Recognizing the need to further streamline dispute resolution, the legislature enacted the Commercial Courts, Commercial Division, and Commercial Appellate Division of High Courts (Amendment) Act, 2018. The Amendment introduced significant changes:

Reduction of Specified Value: The threshold monetary value for commercial disputes was reduced from ₹1 crore to ₹3 lakhs to bring more disputes under the Act's ambit. Introduction of Section 12A: This provision mandated pre-institution mediation and settlement for commercial disputes that did not seek urgent interim relief. Legislative Intent Behind Section 12A:The Court highlighted the intent behind introducing Section 12A: Decongestion of Courts: With the reduction in the monetary threshold, the volume of commercial cases was expected to increase significantly. To prevent overburdening the judiciary, Section 12A introduced a mandatory pre-litigation mediation mechanism. Promotion of Alternative Dispute Resolution (ADR): Mediation was envisioned as a faster, cost-effective, and amicable method to resolve disputes, reducing the need for litigation.Ease of Doing Business: The provision aimed to create a more business-friendly environment by ensuring that disputes were resolved efficiently and amicably wherever possible.The Statement of Objects and Reasons accompanying the 2018 Amendment emphasized that early resolution of even low-value commercial disputes would enhance investor confidence and improve India's global standing in dispute resolution mechanisms.

Text of Section 12A and Its Key Features:The Court quoted Section 12A in its entirety to analyze its language and implications: Mandatory Pre-Litigation Mediation: Section 12A(1) states that a suit “shall not be instituted” unless the plaintiff has exhausted the remedy of pre-institution mediation. Exceptions for Urgent Interim Relief: The provision allows plaintiffs to bypass mediation if the suit involves an urgent need for interim relief. Mediation Framework: The Central Government was authorized to notify Legal Services Authorities under the Legal Services Authorities Act, 1987, to facilitate the mediation process. Timelines: The mediation process must be completed within three months, extendable by two months with the consent of the parties. Settlement Status: Any settlement reached through this process has the same effect as an arbitral award under Section 30(4) of the Arbitration and Conciliation Act, 1996.

Judicial Analysis of Section 12A’s Evolution:The Court examined the evolution of procedural laws in India, including analogous provisions like Section 80 of the CPC (notice to the government before filing a suit) and Section 69 of the Indian Partnership Act (bar on suits by unregistered firms). These provisions, despite being procedural, were held to be mandatory because they served larger public policy objectives. Similarly, Section 12A was deemed mandatory because: It was introduced to further public interest by reducing litigation and promoting ADR. The language of the provision, particularly the use of the word “shall,” indicated a legislative intent to impose a mandatory obligation. Non-compliance would undermine the legislative intent and defeat the purpose of the provision.

Comparison with Section 89 CPC:The Court referred to Section 89 of the CPC, which mandates courts to explore ADR mechanisms during litigation. However, Section 12A was distinguished as it operates pre-litigation, making compliance a condition precedent for instituting a suit. The Court emphasized that Section 12A was not a mere procedural provision but a substantive one that conditions the plaintiff’s right to file a suit.

Practical Implications of Section 12A:The Court noted that Section 12A creates a structured mechanism for resolving disputes without resorting to litigation. It reduces costs, saves time, and fosters goodwill between parties. The provision also provides safeguards: If the opposite party refuses to participate in mediation, the process is deemed a "non-starter," allowing the plaintiff to proceed with litigation. The time spent in mediation is excluded from the limitation period under the Limitation Act, 1963.

Judicial Precedents on Section 12A:The Court acknowledged conflicting High Court judgments on the mandatory nature of Section 12A: Bombay High Court (Ganga Taro Vazirani v. Deepak Raheja): Initially held Section 12A to be directory. Division Bench of Bombay High Court (Deepak Raheja v. Ganga Taro Vazirani): Overruled the earlier decision, declaring Section 12A mandatory. Calcutta High Court: Delivered conflicting judgments, with some treating Section 12A as mandatory and others as directory. The Supreme Court resolved this divergence by unequivocally holding that Section 12A is mandatory.

Decision:The Supreme Court allowed the appeals, holding that:Section 12A is mandatory. Suits filed without complying with Section 12A, unless they seek urgent interim relief, are barred. Such suits are liable to be rejected under Order VII Rule 11 CPC. 

Concluding Note:This landmark judgment reinforces the importance of adhering to procedural laws aimed at promoting alternative dispute resolution. It strikes a balance between judicial efficiency and the principles of access to justice, setting a precedent for future cases involving procedural compliance.

Case Title: Patil Automation Private Limited and Ors. Vs. Rakheja Engineers Private Limited

Date of Order: August 17, 2022

Case No.: Civil Appeal No. of 2022 (Arising out of SLP (C) No. 14697 of 2021)

Court: Supreme Court of India

Judge: Justice K.M. Joseph

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney] 

High Court of Delhi

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Glaverbel S.A. Vs. Dave Rose and Ors.

Credible challenges to the validity of the patent and Interim Injunction

Introduction:This case examines an intellectual property dispute concerning alleged patent infringement related to the manufacture of copper-free mirrors. The plaintiff, Glaverbel S.A., sought an interim injunction against the defendants, claiming infringement of their patented technology. The case involves complex issues of patentability, novelty, inventive step, and infringement under the Patents Act, 1970.

Background:Plaintiff: Glaverbel S.A., a Belgium-based company specializing in manufacturing and marketing glass products. Defendants: Dave Rose and Ors., involved in manufacturing and selling similar mirrors allegedly infringing the plaintiff's patent.

Subject Matter of the Patent:The disputed patent (Indian Patent No. 190380) pertains to the manufacturing of copper-free mirrors and the associated process. The key claims of the patent involve: A mirror with no copper layer, comprising:A vitreous substrate. Application of materials like palladium, bismuth, titanium, or other specified metals. A silver coating layer optionally with additional elements (e.g., tin or silane). Protective lead-free paint layers covering the silver layer.The process for manufacturing the mirror includes:Sensitization: Treating the glass surface with a sensitizing solution (e.g., tin chloride).Activation: Using solutions containing ions of metals like palladium, bismuth, or zinc.Silvering: Coating the activated surface with a silvering solution.Protective Layering: Applying one or more lead-free protective paint layers.The patent claims novelty in eliminating the copper layer, resulting in enhanced durability, corrosion resistance, and adhesion of the silver layer.

Cited Prior Art: The defendants cited several prior art references to argue that the patent lacked novelty and inventive step. Key prior art included:Buckwalter (US Patent 4285992):Taught a process for preparing improved silvered glass mirrors by treating the glass surface with a tin or palladium solution before silvering.Added lanthanide rare earth ions to improve corrosion resistance and adhesion.Included a copper layer over the silver, differing from the plaintiff’s claim of no copper layer.Franz (US Patent 3798050):Related to catalytic sensitization of substrates for metallization.Used palladium chloride and tin chloride solutions to improve adhesion and uniformity of metallic films.Focused on electroless plating and did not specifically address mirrors.Orban (US Patent 4643918):Described a process for metal coating fiberglass filaments.Used palladium chloride or tin chloride for activation, followed by metallization with various metals, including copper, palladium, and gold.Greenberg (US Patent 3978271):Concerned with depositing metallic silver and nickel on transparent articles.Included sensitization with tin salts and activation with palladium chloride.Shipley Patent (GB Patent 929799):Discussed metal deposition using tin chloride or similar catalysts to form nucleating centers for deposition of metals like nickel, cobalt, copper, and silver.Minjer & Boom Research Paper:Related to nickel plating, discussing reaction mechanisms during electroless plating of glass surfaces.Did not directly relate to manufacturing copper-free mirrors.

Principle of Law Applied:Novelty and Anticipation (Section 2(1)(j) and (l) of Patents Act, 1970):A patent must present an invention that is novel and not anticipated by prior art.Anticipation is determined if the prior art discloses the entire invention in substance or essential elements.Inventive Step (Section 2(1)(ja)):The invention must involve a technical advancement or economic significance compared to prior art and not be obvious to a person skilled in the art.Balance of Convenience (Interim Relief Principles):Temporary relief is granted if the plaintiff demonstrates a prima facie case, balance of convenience favors them, and irreparable harm would occur otherwise.

Application of Principles to the Patent and Prior Art:Novelty and Anticipation:Defendants’ Argument: The processes in Buckwalter, Franz, and other prior art disclosed similar steps, such as sensitization with tin chloride, activation with palladium chloride, and application of silver coatings. These elements were known in the industry and lacked novelty.Judge’s Observation: The cited prior art indicated that the foundational processes (e.g., activation and sensitization) and benefits (e.g., corrosion resistance, improved adhesion) were already well-documented. Buckwalter’s patent explicitly described similar corrosion-resistant processes, albeit with a copper layer. This undermined the claim of novelty.

Analysis:Technical Complexity: The court highlighted the technical nature of the dispute, necessitating a trial to examine evidence comprehensively. Global Context: Reliance on international precedents and decisions underscores the interconnected nature of patent jurisprudence. Balancing Rights: The court avoided restraining the defendants prematurely, emphasizing the need to protect both parties’ commercial interests.

Judgment: No Interim Injunction: Held that the defendants raised credible challenges to the validity of the patent. Observed that the German Federal Court's rejection of similar claims supported the lack of novelty and inventive step. Recognized international comity, emphasizing respect for foreign judicial decisions. Prima Facie Observations:Declined to rule conclusively on the patent's validity at the interlocutory stage.ound insufficient evidence to tilt the balance of convenience in the plaintiff's favor.

Conclusion:The case emphasizes the importance of substantiating patent claims with robust evidence of novelty and inventive steps. While the plaintiff presented a prima facie case, the defendants raised substantial doubts regarding the patent's validity, preventing an interim injunction.

Case Title: Glaverbel S.A. Vs. Dave Rose and Ors.

Date of Order: January 27, 2010

Case No.: I.A. No. 3756/2007 in CS (OS) No. 594/2007

Neutral Citation: MANU/DE/0205/2010

Court: High Court of Delhi

Judge: Hon’ble Mr. Justice Manmohan Singh

Advocate Ajay Amitabh Suman

[Patent and Trademark Attorney]

High Court of Delhi

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Novartis AG Vs Union of India

Novartis AG Vs Union of India:Test of Enhanced Efficacy under Section 3 (d) of Patent Act 1970 in relation to pharmaceutical Preparation

Case Title: Novartis AG vs Union of India & Ors.

Date of Order: April 1, 2013

Case No.: Civil Appeal Nos. 2706-2716 of 2013

Neutral Citation: AIR 2013 SUPREME COURT 1311

Name of Court: Supreme Court of India

Name of Judge: Ranjana Prakash Desai, Aftab Alam, H. J.

Introduction :This case primarily revolves around the interpretation and application of section 3(d) of the Patents Act, 1970, in relation to the patentability of a beta crystalline form of Imatinib Mesylate, a drug used to treat chronic myeloid leukemia. The Supreme Court of India had to decide whether this new crystalline form of the drug met the necessary requirements for patentability under Indian patent law, particularly in light of the TRIPS (Trade-Related Aspects of Intellectual Property Rights) agreement.

Background:Novartis AG, a pharmaceutical company, filed an application for a patent for the beta crystalline form of Imatinib Mesylate in 1998. The drug, marketed under the names Glivec and Gleevec, is an important cancer treatment. India’s patent regime, however, had undergone significant reforms in 2005, including the introduction of section 3(d), which aimed to prevent "evergreening" of patents, particularly in the pharmaceutical industry. This provision disallows patents for minor modifications of known substances unless they show enhanced efficacy.

Novartis AG sought a patent for a new form of Imatinib Mesylate, claiming that the beta crystalline form exhibited superior stability, better processability, and lower hygroscopicity compared to the alpha crystalline form. The application, filed in 1998, was rejected by the Indian Patent Office under section 3(d), as the change was considered a mere modification of an existing substance with no substantial increase in efficacy.

Historical Development of Patent Law :The Supreme Court of India provided a detailed account of the evolution of patent law in India, particularly in the context of pharmaceuticals. This historical analysis was essential to understand the legislative intent behind the Patents Act, 1970, and its subsequent amendments, especially the introduction of Section 3(d). Below is an overview of the historical development as discussed in the judgment:

Pre-Independence Era: Patents and Designs Act, 1911:The patent regime in India during British rule was governed by the Patents and Designs Act, 1911. This law allowed for both product and process patents, including in pharmaceuticals and chemicals. However, the system was criticized for disproportionately benefiting foreign entities. It stifled innovation in India and made medicines expensive and inaccessible. The Indian pharmaceutical industry remained underdeveloped, with domestic entities struggling to compete with multinational corporations (MNCs).

Post-Independence Review of Patent Law:After Independence, the government recognized the need for a patent regime tailored to India’s socio-economic conditions.

Tek Chand Committee (1949–1950):The government constituted a committee under Justice (Dr.) Bakshi Tek Chand to review the 1911 Act.Findings: The patent law failed to stimulate indigenous innovation. Patents for food, medicines, and surgical devices should ensure affordability and availability to the public. Recommendations included limiting abuse of patent rights, introducing compulsory licensing, and revoking patents that were not adequately exploited in India. Result: Based on these recommendations, the 1911 Act was amended in 1950 and 1952 to introduce compulsory licensing provisions for food and medicines.

Justice N. Rajagopala Ayyangar Committee (1957–1959): A second committee, headed by Justice N. Rajagopala Ayyangar, conducted a comprehensive review of the patent system.Findings: The 1911 Act primarily benefited foreign entities and did not encourage domestic research or industrial development. A large majority of patents in India were held by foreigners, often without significant economic or technological benefits for India.Recommendations: Retain process patents but exclude product patents for food, medicines, and chemicals to make essential products affordable and accessible. Introduce strict working requirements to prevent abuse of patents.Create a patent law aligned with India’s developmental needs. Result: These recommendations became the basis for the Patents Act, 1970.

Patents Act, 1970:Enacted to replace the 1911 Act, the Patents Act, 1970 was a landmark reform that redefined India’s patent regime.

Exclusion of Product Patents: Section 5 explicitly barred product patents for food, medicines, and chemicals. Only process patents were allowed, ensuring that generic manufacturers could produce affordable versions of drugs using alternate methods.Compulsory Licensing: Strengthened provisions to prevent monopoly abuse and ensure public access to essential products.Shortened Patent Duration::The term for process patents in pharmaceuticals and food was reduced to five years from the date of sealing or seven years from the date of filing, whichever was earlier.Impact: This law catalyzed the growth of India’s domestic pharmaceutical industry, enabling Indian companies to develop affordable generic medicines. By the 1990s, Indian pharmaceutical firms accounted for a significant share of the domestic market and emerged as global leaders in generic drug production.

TRIPS Agreement and its Impact:India became a founding member of the World Trade Organization (WTO) in 1995, which included obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).TRIPS Requirements: Mandated the introduction of product patents in all fields, including pharmaceuticals, by 2005. Required provisions for patent protection of at least 20 years from the filing date.

India’s Transitional Arrangements: India used the transitional period allowed under TRIPS (1995–2005) to delay the implementation of product patents for pharmaceuticals and agricultural chemicals. During this period, India amended the Patents Act thrice:

1999 Amendment: Introduced the "mailbox system" for filing product patent applications.. 2002 Amendment: Enhanced intellectual property rights protection to align with TRIPS. 2005 Amendment: Reintroduced product patents in pharmaceuticals and agricultural chemicals but incorporated safeguards like Section 3(d).

Introduction of Section 3(d):Section 3(d) was introduced in the 2005 Amendment to prevent "evergreening" of patents.Purpose: To ensure that patents are granted only for genuine innovations that demonstrate enhanced efficacy, not for minor modifications of existing drugs. To balance the TRIPS obligations with India’s need to ensure access to affordable medicines. The Supreme Court emphasized that Section 3(d) embodies the Indian legislature's conscious decision to adopt a higher threshold of patentability, particularly for pharmaceuticals.

Effect of the 1970 Act and Subsequent Developments:The Supreme Court noted the remarkable growth of the Indian pharmaceutical industry due to the 1970 Act. Statistics Highlighted: The market share of Indian companies rose from 30% in 1970 to over 75% by 2005. India became known as the “pharmacy of the world,” exporting affordable generic medicines globally.The Supreme Court traced the evolution of India’s patent law to underscore the unique socio-economic context in which these laws were framed. The historical trajectory demonstrated India’s deliberate policy choices to balance innovation with public health. The Patents Act, 1970, and the subsequent introduction of Section 3(d) were critical in shaping a patent regime that prioritized affordable access to medicines while adhering to international obligations under TRIPS.

Procedural Background:The procedural trajectory of the case spanned several stages, from the application at the Controller of Patents to the final judgment by the Supreme Court of India. Below is the detailed procedural background:

Application at the Controller of Patents:Patent Application: Novartis AG filed Patent Application No. 1602/MAS/1998 on July 17, 1998, seeking protection for the beta crystalline form of Imatinib Mesylate, used for treating chronic myeloid leukemia.Grounds for Opposition: The application faced five pre-grant oppositions filed under Section 25(1) of the Patents Act, 1970, by various entities, including generic manufacturers and public interest groups. The oppositions argued that: The invention lacked novelty and inventive step. It did not qualify as patentable under Section 3(d) as there was no significant enhancement in therapeutic efficacy.Decision of the Controller (January 25, 2006): The Assistant Controller of Patents rejected the application based on: Anticipation of the invention by prior publication (Zimmermann patent). Obviousness to a person skilled in the art. Non-patentability under Section 3(d).Invalidity of the priority date claimed (July 18, 1997). The decision was issued in five separate orders against each pre-grant opposition.

Writ Petitions in the Madras High Court: Novartis AG filed five writ petitions challenging the Assistant Controller’s decision. Additionally, Novartis AG and its Indian power of attorney holder filed two writ petitions challenging the constitutional validity of Section 3(d), contending that it violated Article 14 of the Constitution and India’s obligations under TRIPS.

Transfer to the Intellectual Property Appellate Board (IPAB): After the establishment of the IPAB, the five writ petitions against the Controller's orders were transferred to the IPAB for adjudication, as per the High Court's order dated April 4, 2007.Judgment on Section 3(d) by Madras High Court (August 6, 2007): The constitutional validity of Section 3(d) was upheld by the High Court, which stated that the provision aimed to prevent "evergreening" of patents and ensure access to affordable medicines. Novartis AG did not pursue the matter further regarding this judgment.

Appeals before the Intellectual Property Appellate Board (IPAB)Hearing and Decision (June 26, 2009): The IPAB reversed the Controller’s findings on novelty, inventive step, and the priority date. It held that: The invention satisfied the tests of novelty and non-obviousness. The claimed priority date (July 18, 1997) was valid. However, the IPAB dismissed the appeal, stating that the beta crystalline form of Imatinib Mesylate did not meet the requirements of Section 3(d), as the claimed invention failed to demonstrate enhanced therapeutic efficacy. The IPAB also suggested that the high pricing of the drug during Novartis’s exclusive marketing rights (EMR) period was a factor under Section 3(b), as it could create public disorder by making life-saving drugs unaffordable.

Special Leave Petitions (SLPs) before the Supreme Court:Direct Approach to the Supreme Court: Novartis AG filed Special Leave Petitions (SLPs) under Article 136 of the Constitution, bypassing the High Court, citing the urgency of the case as the patent’s term would expire in July 2018. The respondents initially opposed this direct appeal, but later consented due to the case's importance.

Hearing of Appeals:The Supreme Court heard arguments from all parties, including Novartis AG, generic manufacturers, and public interest groups like the Cancer Patients Aid Association. The Court considered the broader implications of the case, including: India’s commitment to public health and affordable access to medicines..International obligations under the TRIPS agreement. The legislative intent behind Section 3(d).

Issues Raised: Whether the beta crystalline form of Imatinib Mesylate qualifies as a new invention under section 2(1)(j) and (ja) of the Patents Act? Whether section 3(d) of the Patents Act, which disallows patents on minor modifications unless they demonstrate enhanced efficacy, applies to this case? 

Submissions of Parties:Novartis AG: The company argued that the beta crystalline form of Imatinib Mesylate was a novel and non-obvious invention, and its superior properties in terms of stability and processability justified the grant of a patent. They also challenged the applicability of section 3(d), contending that it violates India's TRIPS obligations.

Union of India & Respondents: The Indian government and public interest groups such as the Cancer Patients Aid Association argued that granting a patent on the beta crystalline form would lead to monopolistic pricing, making the drug unaffordable to many, particularly in India, where affordable generic versions are crucial. They emphasized the need for patent law reforms to ensure that essential medicines remain accessible to the public.

Provisions of Law Discussed: Section 2(1)(j) and (ja): Definitions of “invention” and “inventive step.” Section 3(d): Prohibition on patents for minor modifications of known substances unless they show enhanced efficacy.

Key Elements of the Test for Enhanced Efficacy:

Therapeutic Efficacy is the Benchmark: The Court held that for a new form of a known substance to be patentable under Section 3(d), it must demonstrate enhanced therapeutic efficacy. This means that the new form must show a tangible improvement in the therapeutic effect provided by the substance in treating or preventing a disease.Comparison with the Known Substance: The new form must be compared with the previously known substance (e.g., the free base or earlier forms) to determine whether there is a significant enhancement in therapeutic outcomes.Physical Properties Alone Are Insufficient: Improvements in physical properties like thermodynamic stability, bioavailability, processability, or flow characteristics are insufficient unless they lead to a demonstrable enhancement in therapeutic efficacy.The Court rejected Novartis’s argument that higher bioavailability (absorption in the body) alone constituted enhanced efficacy, noting that bioavailability does not necessarily translate into better therapeutic outcomes.Objective and Quantifiable Evidence Required: The applicant must provide clear, objective, and scientifically quantifiable evidence to substantiate claims of enhanced therapeutic efficacy. Merely asserting or relying on improvements in physical properties or general claims of efficacy enhancement without robust data does not meet the requirement.Therapeutic Efficacy Depends on the Nature of the Substance: The Supreme Court noted that the determination of therapeutic efficacy will vary depending on the nature of the substance. For pharmaceutical drugs, the focus is on the direct therapeutic impact on the body and its ability to cure, prevent, or mitigate a disease.

Detailed Analysis and Reasoning of the Judge:Court’s Observations on Novartis's Claims:

Claims of Beta Crystalline Form: Novartis argued that the beta crystalline form of Imatinib Mesylate had superior physical properties, including stability and reduced hygroscopicity, and higher bioavailability compared to the free base form. However, the Court noted that Novartis failed to demonstrate how these improved properties translated into enhanced therapeutic efficacy for treating chronic myeloid leukemia.Insufficient Evidence: The affidavits and data provided by Novartis did not conclusively establish that the beta crystalline form offered a better therapeutic effect compared to the free base form of Imatinib. The Court observed that the therapeutic efficacy of the free base form was already well-known, and Novartis could not prove that the beta crystalline form had a superior effect in treating the disease.Interpretation of Section 3(d): The Court stated that the legislative intent behind Section 3(d) is to prevent "evergreening" by ensuring that patents are granted only for genuine innovations that contribute significantly to therapeutic efficacy. The Court emphasized the importance of ensuring access to affordable medicines while promoting innovation.

Key Statement from the Judgment:The Court articulated the test for enhanced efficacy as follows:The test of enhanced efficacy in the context of Section 3(d) would depend upon the function, utility, or purpose of the product under consideration. In the case of a medicine, the test of efficacy can only be applied with reference to its therapeutic efficacy."

Decision:The Supreme Court dismissed Novartis AG's appeals and upheld the rejection of the patent application for the beta crystalline form of Imatinib Mesylate. The Court ruled that the invention did not meet the standards of patentability under Indian law, particularly section 3(d), and affirmed the importance of ensuring that patent laws do not hinder access to essential medicines.

Concluding Note:The case highlights the tension between intellectual property rights and public health concerns in the context of patent law. It underscores the importance of ensuring that patent regimes, while promoting innovation, do not impede access to life-saving medicines, particularly in developing countries like India. The judgment reinforces India's approach to preventing evergreening in the pharmaceutical industry, thereby safeguarding public health while honoring international obligations under TRIPS.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Advocate Ajay Amitabh Suman,[Patent and Trademark Attorney],High Court of Delhi