RSPL Vs Ram Nagar Khadi Udyog

GHADI and TIME Held to Be Deceptively Similar:

Background of the Case:

This case revolves around a trademark dispute between the plaintiff, the registered owner of the trademark "GHADI," and the defendant, who is alleged to have used the trademark "TIME" for its goods. The dispute concerns the potential infringement of the plaintiff's well-known mark "GHADI," which is primarily used for washing detergents, by the defendant's use of a mark allegedly resembling "GHADI" in terms of visual and phonetic elements.

The plaintiff, a well-established brand in the Indian detergent market, claimed that the defendant's trademark "TIME" created confusion in the minds of consumers due to its deceptive similarity to "GHADI." As a result, the plaintiff argued that the defendant's use of "TIME" would not only mislead the public into thinking the products originated from the same source but also dilute the distinctive character of the "GHADI" brand.

The plaintiff initiated legal proceedings, seeking an interim injunction to prevent the defendant from further using the trademark "TIME," alleging that it infringed their trademark rights and posed a risk of significant damage to their brand’s reputation.

Issue of the Case:

The core issue before the court was whether the defendant’s use of the trademark "TIME" amounted to trademark infringement due to its deceptive similarity to the plaintiff's registered trademark "GHADI." Specifically, the court had to determine whether the visual and phonetic resemblance between "GHADI" and "TIME" was sufficient to cause confusion or deception among consumers, thereby constituting infringement under the Trade Marks Act, 1999.

The relevant legal question centered on Section 29 of the Trade Marks Act, which outlines the grounds for trademark infringement, particularly focusing on deceptive similarity and likelihood of confusion in the marketplace.

Contentions of the Parties:

Plaintiff's Contentions:

The plaintiff, a reputed and long-standing user of the trademark "GHADI," raised the following key arguments:

Prior Use and Registration: The plaintiff argued that they had been using the trademark "GHADI" for a considerable period and that the mark was widely recognized in the market, especially in connection with detergents and washing powders. They had duly registered the trademark "GHADI" under the Trade Marks Act, 1999, granting them exclusive rights to use the mark.

Deceptive Similarity: The plaintiff contended that the defendant’s trademark "TIME" was deceptively similar to "GHADI" in both visual appearance and phonetic pronunciation. They argued that although the two words might seem different at first glance, the overall impression created by the marks was sufficiently similar to confuse the average consumer, particularly those who are not paying close attention to the details.

Likelihood of Confusion: The plaintiff argued that the similarity between the marks was likely to cause confusion in the market, especially among ordinary consumers who might mistake the defendant’s products for those of the plaintiff. This confusion could lead to consumers associating the defendant’s goods with the plaintiff's well-known brand, thereby causing dilution of the distinctiveness of the "GHADI" mark.

Irreparable Harm: The plaintiff further contended that if the defendant continued to use the "TIME" trademark, it would cause irreparable harm to their business and brand reputation. They argued that the goodwill built around the "GHADI" mark over the years would be damaged, leading to financial losses and a weakening of their market position.

Issues Dealt with by the Court:

The court addressed both procedural and substantive issues in this case.

Substantive Issues:

Trademark Infringement and Deceptive Similarity: The court had to determine whether the trademark "TIME" used by the defendant was deceptively similar to the plaintiff’s trademark "GHADI" and whether such similarity would cause confusion among consumers.

Balance of Convenience: The court assessed the balance of convenience—whether granting the injunction would unfairly harm the defendant’s business or whether the plaintiff would suffer more if the injunction was denied.

Irreparable Harm: The court considered whether the plaintiff would suffer irreparable damage to their reputation and business if the defendant was allowed to continue using the "TIME" mark, particularly in the form of lost goodwill, consumer confusion, and market share erosion.

Reasoning and Final Decision:

After reviewing the evidence and the legal arguments presented by the plaintiff, the court found that the plaintiff had established a prima facie case of trademark infringement. The court concluded that the defendant's use of the trademark "TIME" was deceptively similar to the plaintiff’s registered trademark "GHADI."

The court’s reasoning was based on the following factors:

Deceptive Similarity: The court noted that while "GHADI" and "TIME" might appear different in isolation, their overall presentation—including visual elements and phonetic similarity—created a risk of confusion among consumers. The court emphasized that in trademark law, the test for deceptive similarity does not require exact replication; it is enough if the marks are so similar that they are likely to mislead an average consumer into associating the two.

Prior User and Registrant: The court acknowledged the plaintiff’s status as the prior adopter and registered owner of the "GHADI" trademark. This gave the plaintiff a strong legal standing, as their registration under the Trade Marks Act granted them exclusive rights to use the mark and prevent others from using deceptively similar marks.

Likelihood of Confusion: The court found that the defendant’s use of the "TIME" mark was likely to create confusion in the market, especially given the similarity in the products being sold (both related to household cleaning products). The court noted that ordinary consumers, who do not scrutinize trademarks closely, could easily mistake the defendant’s products for those of the plaintiff, thereby harming the plaintiff’s brand and goodwill.

Irreparable Harm: The court concluded that the plaintiff would suffer irreparable harm if the defendant was not restrained from using the infringing mark. The court reasoned that financial compensation alone would not adequately remedy the loss of goodwill and damage to reputation that the plaintiff might suffer due to ongoing consumer confusion.

Based on these findings, the court granted interim injunction in favor of the plaintiff, restraining the defendant from using the trademark "TIME" or any other mark that was deceptively similar to the plaintiff’s registered trademark "GHADI." The injunction effectively prevented the defendant from manufacturing, marketing, or selling products under the infringing mark during the pendency of the lawsuit.

Conclusion:

The court’s decision in this case highlights the importance of protecting registered trademarks from deceptive imitation, especially when such imitation has the potential to confuse consumers and damage the goodwill associated with a brand. The ruling reaffirms the principle that during the subsistence of a registered trademark, the rights of the trademark owner must be safeguarded, and any deceptively similar marks that may cause confusion or dilute the distinctiveness of the brand should be restrained. By granting the interim injunction, the court protected the plaintiff’s trademark rights while the case was further litigated.

Case Citation: RSPL Vs Ram Nagar Khadi Udyog: 12.09.2024: CS(COMM) 646/2024:Delhi High Court: Saurabh Banerjee, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

Kent RO Systems Ltd. Vs Suresh Kumar

During subsistence of Registered Design, the Defendant can not be allowed to use replica of the same

Background of the Case:

The dispute in this case revolves around Kent RO Systems Ltd., a prominent manufacturer of water purifiers, who filed a suit against the defendants for allegedly infringing upon their registered design. Kent RO Systems claimed ownership of design registration no. 312406, which protected the aesthetic features of their water purifiers, including the shape, configuration, and ornamentation. The plaintiffs contended that the defendants had replicated their water purifier design, thereby infringing on their exclusive rights under the Designs Act, 2000.

The plaintiffs further asserted that the defendants were manufacturing, marketing, and selling water purifiers that were not only identical in shape and configuration but also mimicked other aspects of their product, such as color scheme and logo arrangement. According to Kent RO Systems, the replication of their product design was likely to confuse consumers and mislead them into believing that the defendants’ water purifiers originated from or were associated with Kent RO Systems.

This prompted the plaintiffs to seek an interim injunction to restrain the defendants from further infringing upon their design rights during the pendency of the litigation.

Issue of the Case:

The primary issue before the court was the alleged infringement of a registered design. Kent RO Systems Ltd. alleged that the defendants had unlawfully copied their registered design, causing both confusion in the market and irreparable damage to their brand reputation. The court needed to determine whether the defendants' products were indeed replicas of the plaintiffs' registered design and, if so, whether an interim injunction should be granted to prevent further infringement while the case was being litigated.

The specific issues addressed by the court included:

Infringement of Registered Design: Whether the defendants had copied or used a design that was substantially similar to Kent RO Systems’ registered design no. 312406.

Grant of Interim Injunction: Whether the plaintiffs had established a prima facie case for infringement, justifying the grant of an interim injunction to prevent the defendants from continuing to manufacture and sell water purifiers that allegedly infringed on the plaintiffs' registered design.

Irreparable Harm and Balance of Convenience: Whether allowing the defendants to continue marketing the infringing products would cause irreparable harm to the plaintiffs, and whether the balance of convenience favored the plaintiffs, warranting the issuance of an injunction.

Contentions of the Parties:

Plaintiffs' Contentions:

Kent RO Systems argued that their registered design, as protected under the Designs Act, 2000, granted them exclusive rights over the design’s aesthetic elements, including the shape, configuration, and overall appearance of their water purifiers. Their main contentions were:

Infringement of Registered Design: The defendants' water purifiers were alleged to be exact replicas of the plaintiffs' products, incorporating not only the same shape and configuration but also the same color palette and placement of logos. The plaintiffs argued that these similarities amounted to design infringement under Section 22 of the Designs Act, which prohibits unauthorized use of a registered design.

Consumer Confusion: The plaintiffs contended that the striking similarity between the products would mislead consumers into believing that the defendants’ water purifiers were connected with or manufactured by Kent RO Systems, resulting in market confusion and dilution of brand value.

Irreparable Harm: Kent RO Systems claimed that they would suffer irreparable damage if the defendants were allowed to continue infringing their design. They argued that monetary compensation alone would not suffice, as the infringement would cause lasting harm to their reputation, goodwill, and market share.

Need for Interim Injunction: The plaintiffs sought an interim injunction to prevent the defendants from continuing the sale and marketing of the allegedly infringing products while the suit was being adjudicated.

Defendants' Contentions:

While the defendants’ arguments were not fully detailed in the provided excerpts, it is typical in design infringement cases for defendants to argue the following:

No Substantial Similarity: Defendants often contend that their products do not infringe upon the plaintiffs' registered design, as the design differences are more than minimal. They may argue that the overall appearance of the products differs sufficiently, making any comparison superficial.

Invalidity of the Design: In some cases, defendants challenge the validity of the registered design, arguing that the design is not novel or does not meet the statutory requirements for protection under the Designs Act. This could include claims that the design lacks originality or was previously disclosed in the public domain.

Issues Dealt with by the Court:

The court considered several critical issues before rendering its decision:

Prima Facie Case of Infringement: The court assessed whether Kent RO Systems had made out a prima facie case of design infringement based on the substantial similarity between the plaintiffs' and defendants' water purifiers. The court had to evaluate whether the defendants’ products bore sufficient resemblance to the plaintiffs' registered design to constitute infringement under the Designs Act, 2000.

Balance of Convenience: The court also examined the balance of convenience—whether the harm to the plaintiffs from the continued sale of the infringing products outweighed the potential harm to the defendants from being restrained. Given the potential for consumer confusion and brand dilution, the court needed to weigh the consequences for both parties.

Irreparable Harm: The court considered the irreparable harm that would result if an injunction were not granted. This included the possibility of market confusion, damage to the plaintiffs' reputation, and dilution of the distinctiveness of their water purifiers' design.

Reasoning and Final Decision:

After evaluating the documents and evidence presented by the plaintiffs, the court concluded that Kent RO Systems had established a prima facie case for design infringement. The court noted that the defendants’ products appeared to be replicas of the plaintiffs' registered design, and that continued sales of the infringing products would likely cause irreparable harm to Kent RO Systems’ business and brand.

Key reasoning included:

Registered Design Protection: The court reaffirmed that the protection granted by a registered design during its subsistence is exclusive to the owner, and any unauthorized use of a substantially similar design amounts to infringement. During the subsistence of the registered design, no third party, including the defendants, can lawfully manufacture, sell, or distribute products that replicate or imitate the design.

Irreparable Harm and Market Confusion: The court recognized that the defendants' use of an identical design could lead to consumer confusion, which would harm Kent RO Systems' reputation and brand equity. The court acknowledged that monetary compensation could not adequately address this type of harm, as the distinctiveness of the plaintiffs' products would be eroded, and their market position undermined.

Balance of Convenience: The court found that the balance of convenience favored the plaintiffs, as the defendants had not contested the claims or provided any justification for their actions. On the other hand, Kent RO Systems stood to suffer significant damage if the defendants were allowed to continue infringing upon their registered design.

In light of these findings, the court granted an interim injunction in favor of Kent RO Systems Ltd., restraining the defendants from manufacturing, selling, or dealing in any water purifiers that infringe upon the plaintiffs’ registered design no. 312406. The court directed the defendants to cease all activities related to the infringing products and set a timeline for further proceedings to address the matter in detail.

Conclusion:

The court's decision in this case underscores the importance of registered design protection under the Designs Act, 2000. A registered design grants its owner exclusive rights to the appearance of a product, and any unauthorized replication or imitation by a competitor constitutes infringement. The court's ruling demonstrates that during the subsistence of a registered design, infringing parties cannot be allowed to use replicas of the protected design, as such actions can cause irreparable harm to the design owner’s reputation and business. By granting the interim injunction, the court safeguarded Kent RO Systems' rights.

Case Citation: Kent RO Systems Ltd. Vs Suresh Kumar: 11.09.2024: CS(COMM) 784/2024:Delhi High Court: Saurabh Banerjee, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

BryNAir (Asia) Pvt. Ltd. Vs Union Of India

Negligence of the Patent Agent Vs. Responsibility of the Applicant

Background of the Case:

The case at hand involves Bry-Air (Asia) Pvt. Ltd., which filed a writ petition against the Union of India and other respondents, challenging the status of their patent application no. 4154/DEL/2015. This application had been deemed to have been withdrawn by the Indian Patent Office (IPO) under Section 11B(4) of the Patents Act, 1970. The specific reason for the withdrawal was the failure to file a Request for Examination (RFE) within the statutory timeline as mandated by the Act.

Under Section 11B(4), if the applicant does not file the RFE within the prescribed period of 48 months from the priority date of the patent application, the application is considered "deemed to be withdrawn." In this case, Bry-Air contended that the non-filing of FORM 18, which is the RFE, was not due to their own neglect or intent to abandon the application but was solely the result of the negligence of their former Patent Agent.

Bry-Air argued that they had no intention of abandoning their patent rights and that the fault lay with the Patent Agent, who failed to meet the statutory deadlines. As such, they sought the court's intervention to quash the status of "Deemed to be withdrawn" and restore their patent application to its original position, allowing them the opportunity to file FORM 18 and proceed with the examination process.

Issue of the Case:

The core issue for the court to determine was whether Bry-Air’s patent application should be restored, even after missing the statutory deadline for filing the RFE, on account of the negligence of their Patent Agent. Specifically, the court had to address:

Should the patent application be restored despite the failure to file FORM 18 within the statutory time limit?

To what extent can the negligence of a Patent Agent excuse an applicant from the consequences of deemed withdrawal under Section 11B(4)?

Does the Applicant’s intent to pursue the patent, as opposed to abandoning it, influence the court’s decision to restore the application?

Contentions of the Parties:

Bry-Air’s Contentions:

Bry-Air asserted that they were fully committed to following the statutory requirements to secure their patent. Their primary argument was that the failure to file FORM 18 was entirely due to the negligence of their erstwhile Patent Agent, who failed to act in time. Bry-Air claimed that they had no fault in the matter and that they should not be penalized for the failure of their Patent Agent, particularly since they had taken swift action upon realizing the error.

Key points raised by Bry-Air included:

No Intent to Abandon: Bry-Air emphasized that they had always intended to pursue the patent application and had no intention of abandoning their rights to the invention. The mere failure to file FORM 18 due to the Patent Agent’s neglect should not be taken as evidence of abandonment.

No Contributory Negligence: The Applicant (Bry-Air) maintained that they themselves were not negligent. They argued that the sole responsibility for the failure to file FORM 18 lay with the Patent Agent, and the Applicant had no contributory role in this lapse.

Restoration of Rights: Bry-Air sought the restoration of the patent application to its original position and requested the court to allow them to file FORM 18 so the examination of their patent could proceed. They contended that the severe consequences of losing their patent rights, due to the Patent Agent’s negligence, were disproportionate to the error committed.

Union of India’s Likely Contentions:

Although the specific contentions of the respondents (Union of India and the Indian Patent Office) are not detailed, it is typical in such cases for the government to argue the following points:

Statutory Deadlines Are Mandatory: The respondents would likely argue that the timelines for filing the RFE under Section 11B(4) of the Patents Act are mandatory and that failure to meet these timelines results in the application being automatically deemed withdrawn. They would contend that the law provides little room for deviation from these statutory requirements.

Applicant’s Responsibility: The respondents might emphasize that it is ultimately the responsibility of the patent applicant to ensure compliance with all statutory requirements. Negligence on the part of a Patent Agent should not relieve the applicant from the consequences of non-compliance with legal obligations.

Issues Dealt with by the Court:

The court was called upon to address the following significant issues:

Negligence of the Patent Agent vs. Responsibility of the Applicant: Should the court distinguish between the negligence of a Patent Agent and the actions of the applicant? Specifically, can the applicant be absolved of the consequences of their agent’s failure to file the RFE on time?

Applicant’s Intent to Pursue the Patent: Should the intent of the applicant to pursue their patent rights be considered when determining whether the application should be restored? In other words, can the applicant's clear intent to continue the patent process override the procedural lapse caused by the agent?

Extraordinary Circumstances and Judicial Discretion: Does the case present extraordinary circumstances where the court may exercise its discretionary powers to provide relief to the applicant, thereby allowing the restoration of the application?

Reasoning and Final Decision:

The court, in its reasoning, underscored the significance of the applicant's intent in cases where a patent application is deemed abandoned or withdrawn. The court noted that abandonment of a patent application is not merely a procedural determination but a question of the applicant's intent. For an application to be considered "abandoned," it must be established that the applicant had the intent to abandon or no longer pursue their patent rights.

Negligence of the Patent Agent: The court distinguished between the actions of the Patent Agent and the Applicant. It held that if the applicant had no contributory negligence and had intended to pursue their application, they should not be penalized for the agent’s negligence. The court acknowledged that it was the Patent Agent’s failure to act that led to the non-filing of FORM 18, and there was no fault on the part of Bry-Air.

Intent to Pursue the Patent: The court placed significant emphasis on the clear intent of Bry-Air to continue the patent process. It was evident from the facts that Bry-Air had no intention to abandon their application, and the lapse was solely due to the agent’s oversight. The court noted that the loss of patent rights, particularly for a valuable invention, is a severe consequence, and where the applicant demonstrates a clear desire to proceed, courts should exercise discretion judiciously.

Extraordinary Circumstances and Judicial Discretion: The court exercised its extraordinary writ jurisdiction, recognizing the exceptional circumstances of the case. It found that it would be unjust to deny Bry-Air the opportunity to pursue their patent due to their agent's negligence. The court further reasoned that the statutory timelines, while mandatory, should not lead to undue hardship where the applicant's intentions were clear, and the failure was not due to their own actions.

In its final decision, the court allowed Bry-Air's writ petition and quashed the status of "Deemed to be withdrawn" for patent application no. 4154/DEL/2015. The court directed the Indian Patent Office to restore the application to its original position and to allow Bry-Air to file FORM 18, thereby continuing the examination process for the patent.

Conclusion:

This case reinforces the principle that abandonment of a patent should not be presumed based solely on procedural lapses, especially when the applicant demonstrates a clear intent to pursue the patent. The decision highlights the court's willingness to take a more lenient approach in cases where an applicant's rights are jeopardized due to the negligence of a third party, such as a Patent Agent. Furthermore, it underscores the importance of intent in determining whether a patent application should be treated as abandoned or withdrawn. Courts may exercise discretion in extraordinary cases to prevent unjust consequences and protect the rights of patent applicants who have acted in good faith.

Case Citation: BryNAir (Asia) Pvt. Ltd. Vs Union Of India: 26.09.2024: W.P.(C)-IPD 17/2024:Delhi High Court: Saurabh Banerjee, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

Bdr Pharmaceuticals Vs Kudos Pharmaceuticals

Post Expiration of Suit Patent, No Relief of Injunction Can Be Granted in Patent Infringement Suit

Background of the Case:

In the case presented before the High Court of Delhi, BDR Pharmaceuticals International Pvt Ltd ("BDR") and Kudos Pharmaceuticals Limited ("Kudos") were embroiled in a dispute over the patent rights to the compound Olaparib, a prominent cancer treatment drug marketed under the brand name "LYNPARZA". The subject of the lawsuit was Indian Patent No. IN 2287201 (referred to as IN’720), which covered the Olaparib compound.

When the suit was filed, the patent was nearing its expiration date, which introduced significant urgency and complexity to the proceedings. Kudos, as the patent holder, sought to protect its exclusive rights in the period leading up to the expiration, while BDR, the alleged infringer, had already launched a product containing Olaparib into the Indian market. The dispute over these rights raised questions about the scope of remedies available post-expiration, specifically concerning the injunctive relief sought by Kudos to halt BDR's sale of Olaparib-containing products.

Issue of the Case:

The central issue before the court was whether Kudos was entitled to an interim injunction to prevent BDR from continuing to deal in products containing Olaparib, despite the fact that the suit patent (IN'720) was on the verge of expiration. Kudos also sought an order compelling BDR to deposit all revenues earned from the manufacture and sale of Olaparib in India with the court, covering the period from BDR's first launch until the patent expired.

This case posed an important question for patent law: could an injunction be granted in respect of a patent that was about to expire, and could the court order financial restitution even after the expiration of the patent? Additionally, the broader legal implications involved the interpretation of fundamental patent law principles, such as the differentiation between patent "coverage" and "disclosure"—issues that extend beyond the immediate life of the patent.

Contentions of the Parties:

Kudos Pharmaceuticals’ Contentions:

Kudos Pharmaceuticals argued that BDR had acted improperly by launching its Olaparib product before the expiration of the IN'720 patent. Kudos claimed that this action constituted patent infringement and should result in injunctive relief, irrespective of the patent's imminent expiration.

Their key arguments included:

Broader Legal Questions: Kudos stressed that the case involved significant legal questions related to patent law, particularly the difference between "coverage" (the scope of claims) and "disclosure" (the information made available in the patent specification). They urged the court to adjudicate on these matters, arguing that the outcome would have broader implications for future patent jurisprudence.

Sales Revenue Deposit: In addition to the injunction, Kudos sought a direction from the court that BDR deposit all revenues earned from the sale of Olaparib into the court's registry. This deposit was seen as a precautionary remedy to safeguard Kudos' financial interests pending the final adjudication of the case.

Continuing the Proceedings: Kudos argued that the court should continue to adjudicate the injunction application even though the patent was nearing expiration, citing the importance of addressing misconduct and protecting their commercial interests during the residual period of the patent.

BDR Pharmaceuticals’ Contentions:

BDR Pharmaceuticals took the position that an injunction could not be granted once the patent had expired, as there would be no legal basis to prevent the continued sale of their Olaparib product once the exclusive rights conferred by the patent ceased to exist.

Their key arguments included:

Futility of Injunction Post-Expiration: BDR argued that an injunction would serve no purpose since the patent was on the verge of expiring, and once expired, Kudos would have no right to exclude them or any other competitor from selling the Olaparib product.

No Misconduct: BDR denied any misconduct, maintaining that they had complied with the legal requirements and had launched their product lawfully in accordance with Indian patent law. They contended that any deposit of sales revenue should only be ordered if they were found liable for infringement after a full trial.

Pending Appeal: BDR further argued that the matter was already the subject of an appeal before the Division Bench, which would ultimately resolve the issues between the parties. As such, the continuation of the injunction proceedings in the trial court was unnecessary and would only prolong litigation without substantive benefit.

The High Court was faced with several critical issues:

The Right to Injunction Post-Patent Expiration: Could Kudos still seek an injunction to stop BDR from dealing in the patented product when the patent was only days away from expiring? This question hinged on whether the right to exclude others from using a patented invention remained enforceable through injunctions once the patent expired.

Coverage vs. Disclosure in Patent Law: The case involved nuanced legal questions about how the claims of a patent (coverage) should be interpreted in light of the technical information disclosed in the patent specification (disclosure). This distinction is critical in patent law and influences how broadly a patent can be enforced.

The Request for Revenue Deposit: The court had to decide whether BDR should be ordered to deposit its sales revenues from Olaparib into the court’s registry as a form of financial security pending the outcome of the trial. The question here was whether this was an appropriate remedy, given that the patent was expiring imminently.

Urgency of the Matter: Given the imminent expiration of the patent, the court had to determine whether there was sufficient urgency to continue hearing the injunction application or whether the focus should shift to other forms of relief, such as damages or an account of profits.

Reasoning and Final Decision:

The court, after careful consideration of the issues, made the following observations:

No Injunction Post-Expiration: The court recognized that once a patent expires, the right of exclusivity granted to the patent holder is extinguished. This means that any ongoing sale or use of the patented invention after expiration does not constitute infringement, as the product enters the public domain. Since the IN’720 patent had expired by the time the case was being heard, the court held that it was legally impossible to grant injunctive relief against BDR to stop the sale of Olaparib-containing products.

Coverage vs. Disclosure: While the court acknowledged the importance of the issues surrounding patent coverage and disclosure, it concluded that these questions were academic in this case due to the patent's expiration. However, it noted that these issues could still be explored during the full trial, particularly when assessing any claims for damages or profits earned prior to expiration.

Revenue Deposit: The court rejected Kudos’ request for BDR to deposit its revenues from the sale of Olaparib into the court's registry. The court noted that any remedy in the form of monetary compensation, such as damages or an account of profits, would be appropriately decided after the trial concluded, once liability was determined.

Appeal Proceedings: Given that an appeal was pending before the Division Bench on a related issue, the court refrained from taking any further substantive steps in the matter. It deferred to the Division Bench’s ultimate resolution of the issues between the parties.

In light of these findings, the court dismissed the injunction application, holding that no injunction could be granted post-expiration of the patent. The case was set to proceed to trial for the determination of damages or other monetary remedies, if any.

Conclusion:

This case reaffirms the legal principle that injunctive relief is tied to the existence of an enforceable right, which, in patent law, ceases to exist once the patent expires. After expiration, patent holders are no longer entitled to prevent others from using or selling the patented invention. However, the court can still adjudicate on claims for damages or an account of profits for infringing activities that occurred before expiration.

Case Citation: Bdr Pharmaceuticals Vs Kudos Pharmaceuticals: 25.09.2024: Co Comm IPD PAT 1 of 2024:Delhi High Court:Sanjeev Narula, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.