5 Landmark Intellectual Property Law Cases

Author - Associate Megha Motwani

1.      Novartis AG v. Union of India, (2007) 4 MLJ 1153

Facts

- In 1997, Novartis, a Swiss based pharmaceutical giant filed an application to grant patent to an anticancer drug Glivec which is used to treat Chronic Myeloid Leukemia (CML) and Gastrointestinal Stromal Tumours (GIST) on the basis that it invented the beta crystalline salt form (imatinibmesylate) of the free base, imatinib.  It is a critical drug which is patented in about 35 countries of the world.

- Till 2005 India was not into granting patent to pharmaceutical products and agrochemical products.  In the year 2005 India revised its patent law and started granting patents on pharmaceutical drugs. In 2006, the Madras Patent Office refused the patent application of Novartis for its drug Glivec stating that the said drug did not exhibit any major changes in therapeutic effectiveness over its pre-existing form, which was already patented outside India. The said decision was based on Section 3(d) of the Indian Patents (Amendment) Act, 2005 which provides  a known substance can only be patented if its new forms exhibit “enhanced efficacy”. The Patent Office did not find any enhanced efficacy in the drug Glivec and, therefore, considered it incapable of patent under Section 3(d) of 2005 Act.

- Novartis challenged the said order by filing Special Leave Petition before the Supreme Court.

Issues

Whether the invention is in consistent with Section 3(d) of the patent act?

Decision

According to the section the product has to qualify the test laid down in Section 3(d) of the Patent Act which declares that “the very discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance, will not be treated as an invention”.

The court observed that the product was one of the new forms of the substance and not the whole substance. It has always existed in the original amorphous form. Therefore, the Section clearly specifies that a new form of the substance in not patentable under Indian law unless it enhances its “known efficacy”.

2.  DurgaDutt Sharma v. N. P. Laboratories, AIR 1965 SC 980

Facts of the case

- Appellant carried on business which involved preparation of ayurvedic pharmaceutical products under the name of “NavaratnaKalpa Pharmacy” and had been vending medicines prepared by him under the name of “NavaratnaKalpa”. this case is also known as kavirajpandit case or kavirajpanditdurgaduttsharma v. navaratna pharmaceutical laboratories case

- The respondent firm (N.P Laboratories) was founded in 1926 under the name of “Navaratna Pharmacy” later changed to “Navaratna Pharmaceutical Laboratories” in 1945. Respondent was a manufacturer of medicinal products and proprietor of two registered trademarks “Navaratna” and “Navaratna Pharmaceutical Laboratories” from a period prior to February 25, 1937.

- In the instant case the petitioner DurgaDutt has appealed against the decree passed by the District Judge which was in favor of the plaintiff (herein after referred to as respondent N.P Laboratories) who prayed for perpetual injunction to restrain the defendant (appellant) from advertising, selling, trading or dealing in any preparations containing the term 'Navaratna', and thereby restricting him from infringing the firm's registered trade mark 'Navaratna'.

- The plaintifi's brought the original suit in 1946 when Pandit Sharma applied for the words 'NavaratnaKalpa' to be registered in respect of all his pharmaceutical preparations; and, when the said application was advertised, the plaintiff firm on April 1, 1950, opposed the registration on the grounds that the plaintiff already had the similar word registered in his name and that the word 'Navaratna' had acquired them distinctiveness.

- The plaintiff also alleged that the continuance to use the word 'Navaratna' is likely to cause confusion in the public minds or mislead the public into the belief of the business being that of the firm and that for such infringements of the rights the plaintiff firm is entitled to injunction and damages. 

-The Appellant made an appeal against the decree of the District Court and also filed an Original Petition in the High Court of Travancore-Cochin making the prayer that the word 'Navaratna' is ordinarily used by Ayurvedic physicians for medicines prepared out of the nine precious stones, and it’s a generic word common to the Ayurvedic system of treatment, therefore, plaintiff can’t claim that it had acquired them a distinctiveness. 

- The decree against the Appellant was confirmed by the High Court and the Original Petition seeking removal of the trademarks of the Respondent was dismissed.

- Appellant filed two Special Leave Petitions before the Supreme Court against the orders of the High Court alleging that::

-The word 'Navaratna' being descriptive its registration would be invalid and is likely to deceive.

-  That the word is not invented as it is from Ayurvedic medical dictionary, or part of the ancient language.

The question of law involved in the case of kavirajpanditdurgaduttsharma v. navaratna pharmaceutical laboratories 

Whether the use of the word “Navaratna” is bona fide and can the respondent succeed in stopping kavirajpanditdurgaduttsharma from using it?

Decision

It was held in the kavirajpandit case that a word which is common in use cannot be appropriated by a person solely as his own, unless it be established by strong and irresistible evidence that the original meaning of the word is lost and another acquired by the use of the word by the person claiming the monopoly.

And by considering the evidence on record the Supreme Court observed that the word "Navaratna" although has been registered as its TradeMark for a long time, and the plaintiff has gradually increased their earnings from the sale of such preparations with the words printed in very bold types, but that does not suffice to show that the word has lost the Ayurvedic medical meaning or the general public in this country have come to recognize the word as only the trademark of the firm's medicinal preparations. Because such a secondary meaning has not been established, the word has not in fact become so distinctive as to justify the firm being given the benefit of the proviso to Section 6(1)(e) of the Cochin Trade Marks Act. In these circumstances, the learned Judge rightly hold that the firm's claim to the word being its trade mark is not justified and because the monopoly is not established, the bench does not see how the firm is entitled to stop Pandit Sharma from its bona fide use.

3. F. Hoffman-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., 1969 (2) SCC 716

Facts

- The appellant is - Limited Liability Company incorporated under the laws of Switzerland and carried on business in the manufacture and sale of pharmaceutical and chemical products. The respondent is - company incorporated under the companies Act in India and also carries on business in the manufacture and sale of pharmaceutical products.

- On December 2, 1946 the appellant applied for registration of its trademark PROTOVIT. The application was granted and the appellant’s mark was registered in class V in respect of “Pharmaceutical preparation of human use and for veterinary use, infants and invalid’s foods”.

- On January 28, 1957 the respondent applied for registration of its mark “DROPOVIT” in respect of medicinal and pharmaceutical preparation and substances’. The application was registered but the advertisement of the respondent’s application escaped the notice of the appellant who did not hence oppose the registration.

- On January 21, 1959 the appellant applied for rectification of the register by removal therefrom of the respondent’s trade mark. The ground urged in support of the application was that the respondent’s mark so nearly resembled the appellants mark as to deceive or cause confusion.

- On March 9, 1960 the appellant applied for amendment of the application and an additional ground was taken that “DROPOVIT” was not an invented word. The application for amendment was allowed by the registrar.

- The amended application was opposed by the respondent which was followed by the judgment dated August 5, 1961 by the joint register which rejected the application holding that “DROPOVIT” was not deceptively similar to “PROTOVIT” and that the word “DROPOVIT’ considered as a whole was not descriptive.

- The appellant took the matter in appeal.

Issues

1. Whether the word "DROPOVIT" resembles the word "PROTOVIT" to be "likely to deceive or cause confusion”?

2. Whether the word DROPOVIT is a descriptive word or an invented word?

Decision

1.Whether the word "DROPOVIT" resembles the word "PROTOVIT" to be "likely to deceive or cause confusion”?

In Aristoc Ltd. v. Rysta Ltd.[1] the House of Lords considered it necessary that the resemblance between two words must be checked by applying the test of visual and phonetic.

The respondent made a statement that the letters 'D' and 'P' in "DROPOVIT" and the corresponding letters 'P' and 'T' in "PROTOVIT" cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view. And considering the nature of the goods it is likely that most of the customers would obtain a prescription from a doctor and show it to the chemist before the purchase. In such a case, except in the event of the handwriting of the doctor being very bad or illegible the chance of confusion is remote.

Thus, after considering all the circumstances of the present case it was held that the Joint Registrar of TradeMarks were right in holding that there was no real tangible danger of confusion if respondent's trade mark was allowed to continue to remain on the Register and the application for rectification made by the appellant should be dismissed.

2.  Whether the word DROPOVIT is a descriptive word or an invented word?

The term "DROPOVIT" meant "DROP OF VITAMIN" with the word 'of' being misspelled as 'O' and 'VIT' being used to denote "Vitamins", and the three separate words are joined together to make "DROPOVIT" as one word and "to be an invented word within the meaning of the Act a word must not only be newly coined, but must be such as not to convey an, meaning, or, at any rate, any obvious meaning to ordinary Englishmen. It must be a word having no meaning or no obvious meaning until one has been assigned to it."

The High Court considered the above explanation. Thus, The Supreme Court sees no reason to differ from the reasoning of the High Court on this aspect of the case and thereby, holding that the word "DROPOVIT" is an invented word as it is not a descriptive word.

4.F. Hoffmann-La Roche Ltd. v. Cipla Ltd., MANU/DE/0517/2008;

Facts

- Two plaintiffs 1 & 2, namely, F. Hoffmann-La Roche Ltd. and OSI Pharmaceuticals Inc., respectively have filed the suit for permanent injunction against defendant Cipla Ltd.

- The plaintiff were actively engaged in the manufacture, marketing and sale of the innovative drug Tarceva (Erlotinib) in various countries introduced it in India too in April 2006.

- On 11th January the report of one English daily – Mint was published by the Hindustan Times Group from which the plaintiff learned about the defendant who is also engaged in manufacture and marketing of pharmaceutical and health care products in India is involved in several actions which are in nature of violation of intellectual property rights including patent rights as the defendant has plans to launch a generic version of the drug Tarceva (Erlotinib) in India and also for exporting the same to various countries.

- This step of the respondent has caused the plaintiff to file a suit for infringement of right. The plaintiffs have claimed that under section 48 of the Patent Act, 1970 there exclusive right to prevent third party from dealing in the product or process which belong to them has been violated.

- In response of the claims made by Roche, Cipla replied that

-  First - Patent granted to Erlotinib was invalid as the composition of Erlotinib was same as that of Quinazoline except for one substitution which was “obvious to any skilled person”. Also under Section 2(1)(a) of the Patents Act 1970, pharmaceutical meant involving one or more inventive steps and something which had not been anticipated by any document or publication in any country . Meaning thereby that Roche’s invention, as disclosed by them in the complete specification did not involve any inventive step, having regard to what was publicly known or what had been published in India.

-  Second -  for any drug to be qualified as patentable under Section 3(d) it is essential that one shows that there is “any improved efficacy of the said drug.

-  Third - what Cipla pleaded was public interest. It pointed out that the plaintiff's capsule costs Rs. 4,800/- per tablet and the equivalent tablet of the defendant costs Rs. 1,600/-. Thus, a month's dosage for a patient undergoing treatment for cancer is Rs. 1.4 lakh whereas the equivalent cost of the defendant would be Rs. 46,000/. This huge difference in price between Roche’s drug and Cipla’s drug should be taken into account because the drug in question was a lifesaving drug and the public interest issue was an important factor.

- The respondent Cipla, thus, claimed that the interlocutory injunction must not be granted.

Issue raised

Whether it’s correct to deny infringement as Erlotinib was the derivative of any compound and not an invention as provided in section 3?

Decision

In the present case the court pointed out that the unique compound which was claimed by plaintiff is involved in the medicine Erlotinib  cannot held to be inventive, it quoted that “A mere difference in physical property is a well-known conventional variation of the same pure substance not showing unobvious properties. Therefore, the changes alleged by the applicant are in the physical properties and not in the therapeutic efficacy. This clearly amounts to Evergreening tendency which has been denied by Section 3(d).

5. ICC Development International v. Arvee Enterprises &Anr.; 2003 PTC (26) 228]

Facts

- The plaintiff was the organizer of the ICC World Cup which was scheduled to be held from February 8, 2003 till March 23, 2003 in South Africa, Zimbabwe and Kenya. The plaintiffs had created a logo and mascot for the event which came to be known as "Dazzler". Thereafter owing to the publicity of the event throughout the world, people associated the logo and mascot with the plaintiffs. Subsequently the company filed for registrations of its trademark in several countries that were associated with the game of cricket. Accordingly, the plaintiffs had also applied for registration of words "ICC Cricket World Cup South Africa 2003" and logo and the mascot "Dazzler" in India too. There were 9 official sponsors of the World Cup which didn't include Philips India Ltd.

- Arvee Enterprises (hereinafter referred to as the defendant) was an authorized dealer of Philips India Ltd. and were engaged in the business of sale and service of electronic goods manufactured by the latter. They launched a sale promotion campaign offering Cricket World Cup tickets as prizes to the buyers using the slogans "Philips : Diwali Manao World Cup Jao" and "Buy a Philips Audio System win a ticket to the World Cup". They even inserted a pictorial representation of a ticket with an imaginative seat and gate number saying "Cricket World Cup 2003."

- The plaintiffs wen came to know about the advertisement, they filed a suit in the Delhi High Court contending

-  That the defendants are misrepresenting their association with the plaintiff and the World Cup, by advertisements in media and by using said offending slogans the defendants are trying to unlawfully derive commercial benefit of association with the plaintiff and the World Cup thereby, seeking to piggyback on the reputation of the plaintiff.

-  That the defendants' intentional use of the words "Philips: Diwali Manao World Cup Jao" on the advertising campaign amounts to 'passing off, 'unfair competition', and 'ambush marketing', and that the defendants are trying to reap profits at the plaintiff's expense.

- In reply the contentions made by the plaintiffs, the defendants contended that

-  That the basic ingredients for a passing off action, unfair competition or ambush marketing are not made out.

-  That the World Cup was a sporting event and not a trade name and property of the plaintiff in respect whereof an injunction has been prayed. They stated that the phrase "World Cup" was a very generic one which is not capable of conferring any exclusive rights in relation to trademarks. Generic words can never be trademark as are meant to be available for use by everyone. And that the defendants have not used the World Cup in the course of trade or in trade mark significance nor it is used to indicate a trade origin or that they are the sponsors of the Event.

-  And that they had booked tickets and travel packages for 125 persons for the Event and that they had already paid paidRs. 25,00,000/- ,which was confirmed by the travel agency.

Issues

Whether the conduct of defendants amounted to passing off?

Decision

Passing off cases are of two types - First are those where the competitors are engaged in a common field of activity and the plaintiff complains that the defendants have named, packaged or described his product or business in a manner likely to lead the public to believe that the defendants' product or business is that of the plaintiff. Second, is where it is alleged that defendant has promoted his product or business in such a way as to create the false impression that his product or business, is in some way approved, authorized or endorsed by the plaintiff or that there is some business connection between them.

Thus, it was held that the defendants were not trying to derive commercial benefit for themselves by offering the tickets as the use of the slogan does not show likelihood of any confusion in public mind that defendants are sponsors or licensees of the Event. The slogans merely show that the purchasers of the defendants' goods may win a ticket and travel package to see the world cup and nothing more. There is nothing in advertisements to show that public is likely to be confused that defendants' goods are sponsored by the plaintiff. As, they didn't use it for marketing of their products therefore, basic ingredients of passing off action or unfair competition are not made out. Hence, the injunction application made by the plaintiffs was dismissed.