Thursday, 29 October 2015

The President Promulgated an Ordinance constituting Commercial Courts in India

Commercial Courts established in India

The President of India (Shri Pranab Mukherjee) on October 23, 2015 promulgated the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Ordinance, 2015, No. 8 of 2015.

The Ordinance is aimed to provide speedy settlement of commercial disputes by providing for the constitution of Commercial Courts, Commercial Division and Commercial Appellate Division in the High Courts for adjudicating Commercial Disputes of Specified Value, which shall not be less than One Crore Indian Rupees or such higher value as may be notified by the Central Government and for matters connected and incidental thereto.

The State Government may after consultation with the concerned High Court, by notification, constitute such number of commercial courts as it deems necessary provided no Commercial Court shall be constituted over which the High Court has ordinary original civil jurisdiction.

Pursuant to this Ordinance, all suits and applications, including the ones under The Arbitration and Conciliation Act, 1996 relating to commercial disputes of such specified value pending in the High Court or any civil court in any district, shall be transferred to the Commercial Division or Commercial Court as the case may be.

Further, all suits and applications transferred to the High Court by virtue of Section 22 (4) of the Designs Act, 2000 pertaining to Piracy of a Registered Design, or Section 104 of the Patents Act, 1970 pertaining to Jurisdiction of Suits concerning Infringement of Patents, shall be heard and disposed of by the Commercial Division of the High Court in all the areas over which the concerned High Court exercises ordinary original civil jurisdiction.

The said Ordinance can be accessed here

Japan Patent Office (JPO)-IPR Training for IP Protection Lawyers in Tokyo 2015

Date: October 4 to October 24, 2015                                                   Place: Tokyo, Japan

Recently, the Japan Patent Office (JPO) organized a training programme namely, JPO/IPR Training for IP Protection Lawyers in Tokyo. The training session which saw the presence of several IP lawyers from Brazil, Vietnam, Cambodia, Mexico, Malaysia, China and India took place from October 4 to October 24, 2015.

Managing Associate Advocate, Mrs. Lucy Rana from S.S. Rana & Co. participated in the training programme wherein she interacted with IP protection lawyers from other countries and discussed on myriad IP related topics like trademark infringement remedies in different countries, the scope of protection, advantages and disadvantages of the measures adopted in cases of trademark infringement and the scope of improvement in the existing system of IP protection in different countries.

Mrs. Rana also presented a recent case study dealing with the issues of trademark infringement, well-known trademarks and deceptive similarity of marks. According to Mrs. Rana the training session on IPR organized by JPO was very educative, interactive, collaborative and certainly helpful in incorporating changes and adopting best practices for making the present IP protection system in India more conducive and beneficial for IP holders.

Mrs. Lucy Rana during her presentation at the JPO-IPR Training

Tuesday, 20 October 2015

Glenmark Loses the Anti- Diabetic Drug Patent Battle to Merck: In Delhi High Court

We had previously reported in our newsletter Vol. VII, Issues 13 dated March 30, 2015 that the Supreme Court had stayed the injunction order passed by the Delhi High Court against Glenmark.

Merck Sharp & Dohme Corporation & Anr. (Plaintiff) had filed the suit against Glenmark Pharmaceuticals Ltd. (Defendant) for permanent injunction praying to restrain them from making, using, selling, distributing, advertising, exporting, offering for sale or dealing in Sitagliptin Phosphate Monohydrate or any other salt of Sitagliptin in any form, alone or in combination with one or more other drugs or from doing any other thing that infringes the claimed subject matter of the plaintiff’s Indian Patent No. 209816. Click here to view the news reported earlier.

Now, after the trial the Learned Single Judge of the Delhi High Court on October 07, 2015 has restrained the defendant from selling, distributing, marketing or exporting its anti-diabetes drugs Zita and Zita-Met, on the ground that they infringed plaintiff’s patent. However, no issue has been framed in regard to the damages. Further, plaintiff is entitled to actual costs of the proceedings.

Highlights of the judgement are mentioned below:
  • The Learned Judge was of the opinion that it is the Sitagliptin Free Base which is the DPP-IV inhibitor and phosphate salt is used for delivery of Sitagliptin in the body. Sitagliptin Phosphate Monohydrate has enhanced properties in the sense that it has improved chemical and physical characteristics, but the active moiety is Sitagliptin. Therapeutic efficacy is not enhanced by Sitagliptin Phosphate Monohydrate since it is the Sitagliptin itself which is the active moiety and is effective for inhibiting DPP-IV enzyme and is useful for treatment of type II diabetes. Thus, use of Sitagliptin Free base alone in Sitagliptin Phosphate Monohydrate tablet by the defendant itself amounts to infringement of the suit patent.
  • Merely because the defendant selling the generic version of the tablet at a lower price than that of plaintiff’s, cannot be made a ground to decline injunction against the defendant under public interest.
  • Further, no evidence has been led by the defendant to show non-disclosure of information was deliberate and for malafide reasons.
  • It is not mandatory for the Court to revoke the patent merely because any of the grounds mentioned in Section 64(1) [Revocation of patents] are made out. It is the discretion of the Court to revoke or not to revoke in the given facts and circumstances of a case.
  • The word “may” is used in Section 64(1) of the Act makes it clear that it is the discretion of the Court to revoke the patent under this provision if any of the ground(s) stipulated therein are disclosed or made out.
Section 64 (1): Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, …
  • The Judge also found defendant’s witness taking shifting stand and hence unreliable.

Ministry of Environment, Forest and Climate Change invites comments on the Draft Environment Laws (Amendment) Bill, 2015

The Draft Environment Laws (Amendment) Bill, 2015 has been introduced by the Ministry of Environment, Forest and Climate Change with the objective to provide an effective deterrent penal provisions and to introduce the concept of monetary penalty for violation and contravention of the provisions of the Environment (Protection) Act, 1986 and National Green Tribunal Act, 2010.

The Ministry has invited objections/ suggestions from the public on the Draft Bill by October 22, 2015.

The objections/ suggestions can be send by e-mail to and or at the following address:

Ministry of Environment, Forest and Climate Change,
Indira Paryavaran Bhawan,
Jor Bagh Road, Aliganj,
New Delhi- 110003

The Ministry of Environment, Forest and Climate Change Draft Bill can be accessed from the following link:

S. S. Rana & Co. at 4th Annual Pharma Legal and Compliance Summit by Lex Witness

S.S. Rana & Co. participated in 4th Annual Pharma Legal and Compliance Summit by Lex Witness in Mumbai on October 16, 2015 at The Leela.  

The Summit is an excellent platform to get together and share the regulatory and legal developments and challenges in the pharmaceutical industry with Compliance being the key mandate of the Summit.

Discussions were held on ‘Unleashing the sciences of Trademarks & Copyright’, ‘M&A and FDI rides of the Indian pharma sector’,  ‘An insight into the current patent scenario in India’ and ‘The regulatory sagas and the challenges within.’

Ms. Bhawna Sharma, Patent Agent at S. S. Rana & Co. was a panelist discussing ‘An insight into the current patent scenario in India’. The panel discussion included an overview of Patentability criteria, Patent enforcement, Compulsory licensing, Compliance protocol of the Indian Patents Act, Voluntary licensing- In Licensing/Out Licensing and Data exclusivity.

The conference was an overall success and saw active participation from pharma/bio pharma firms, IP and regulatory consultants, law firms and Patent Agents.

Monday, 12 October 2015

The Crayon Wars: Faber Castell v. Cello

The High Court of Bombay on September 3, 2015, in a dispute between Faber Castell (the Plaintiff) and Cello Pens Pvt. Ltd. (the Defendant) over crayons, granted injunction against the Defendant.

In the present case, the Plaintiff filed a suit for infringement of design, copyright and passing off, etc., against the Defendant. The Plaintiff alleged that the Defendant had infringed the three-sided crayon design and also attempted to pass- off them as being that of the Plaintiff.

The Plaintiff based its contentions with regard to the distinctiveness of its crayons, on the ground that, it had a novel and unique shape, i.e. trigonal, the packed product including 24 crayons and moreover the twin series of paralleled line of dots on each stem of the three sides on the crayons. The Plaintiff further stated that their crayons were unique with regard to its presentation, wherein two sunken plates are facing each other inside a bigger outer ampule.

According to the Plaintiff there existed five key and distinctive elements to the Plaintiff’s crayons i.e. 

    • Triangular shape,
    • Sharpen-able,
    • Erasable,
    • Non-slip grip, and
    • Arrangement in the tray.

The Plaintiff clearly mentioned of having no interest in claiming monopoly over any one of the aforementioned specialty, but instead contended that it was the combination of all these aspects in a specific manner along with the presentation, which went beyond being merely functional and was in fact entirely aesthetic, novel and certainly unique to that of the Plaintiff’s and thereby, definitely exceptional to that of the Defendants and nobody else. 

The Defendant on the other hand attributed the Plaintiff with suppression and submitted that such suppression was material particularly as the key elements mentioned by the Plaintiff were purely functional and not capricious additions. The Defendant further submitted that if there had been prior publication of the Plaintiff’s designs, then the burden on the Plaintiff would be significantly higher as the Plaintiff would not only be unable to argue design infringement at the interim stage but they in addition would also have to prove that the features of the product are neither purely descriptive nor purely functional and thus, there is exclusivity attached to those features and that the confusion is inevitable or has actually occurred.

The High Court of Bombay, considered the issue of capriciousness in respect to the key feature of the Plaintiff’s crayons and observed that the twin series of parallel lines of dots as well as the name and logo of the Plaintiff embossed on the crayons were artistic and not functional elements. The Court further observed that there was nothing to suggest that the twin parallel lines of dots provide the functionality of a better grip or that such parallel lines of a specific length aid any such functionality and stated that if at all the twin parallel lines were functional, there was no reason why the Defendant had chosen not to extend them across the entire length of the shanks and had instead chosen to stop at the exact length the Plaintiff had stopped.

The Court placed reliance on various authorities to determine the issue of passing off claimed by the Plaintiff against the Defendant;

The Court while placing reliance on Jones v. Hallworth [14 RPC 225] where the issue of whether permissible copying of various features might lead to impermissible passing off of the whole was dealt with, stated that this position was exactly similar to the case at hand and further held that on comparing the products of both parties, the only distinction which can be carved out between the two was that the Plaintiff’s name and logo were missing on one of the shanks of Defendant’s crayons. All the other features of Defendant’s crayons were exactly same as that of the Plaintiff’s. Therefore, taken together in aggregate, the Bombay High Court held that such a combination of features including the exact length of the parallel lines of dots and the same manner of presentation as Plaintiffs crayons indicate passing off.

The Court further, examined the case of Whirlpool of India Ltd. v. Videocon [2014 (60) PTC 155] which considered the issue of where a particular element has both form and function. The Bombay High Court in that case held that the mere existence of function combined with form did not disentitle such an element from protection altogether. However, in that case, the external shape of the washing machines was held to have no functional purpose. In such a situation, it cannot be argued that the functionality of the elements were such that it was not possible to have any alternate design other than the Plaintiff’s design. Moreover, when the external shape of the washing machine has no functional purpose, it is redundant for the Defendant to employ a defense attributing features of the Plaintiff’s design to functional requirements. Applying the same principles to the instant case, the Court held that as the Defendant has been unsuccessful in showing the functional uses for the key elements of Plaintiff’s crayons, it could not argue that this was the only possible design it could have employed.


After considering the principles of the above cited authorities, the Court held that from the view point of the target audience of a child or a harried parent, there was no distinction between the two products. The Court further stated, “that every single feature that has been used in a unique fashion by the Plaintiff in creating their products was replicated, down to the last millimeter, in Defendant’s product.”

Thus, the Court held that due to the Defendant’s inability to prove functional uses for Plaintiff’s pastel crayons, their design of crayons was the only conceivable design and that the products of the parties were confusingly similar, the Bombay High Court granted Plaintiff with the injunction against Defendant, noting that if the Defendant’s pastel crayons were to persist in the market, it would result to monetary loss faced by the Plaintiff. 

Wednesday, 7 October 2015


The High Court of Delhi, while granting an ex parte interim injunction to Retail Royalty Company (Plaintiff) and restraining Pantaloons Fashion & Retail Limited & Ors. (the Defendants) from using the trademark “URBAN EAGLE AUTHENTIC OUTFITTERS” vide its Order dated September 21, 2015, disallowed exclusive right over the mark “EAGLE” by the Plaintiff vide its Order dated September 23, 2015 in Retail Royalty Company v. Pantaloons Fashion & Retail Limited & Ors. (CS(OS) 2872/2015).

Brief facts of the Case
  • The Plaintiff and Defendants are both engaged in, inter alia, the premium clothing retail sector.
  • The Plaintiff is stated to be the owner of the trademarks AMERICAN EAGLE OUTFITTERS / AMERICAN EAGLE.
  • The Defendants are stated to be using the trademarks URBAN EAGLE AUTHENTIC OUTFITTERS.

Court’s Ex-Parte Interim Order dated September 21, 2015

The High Court of Delhi, vide its order dated September 21, 2015, granted ex parte interim injunction against the Defendants stating that –
  • it prima facie appears that the Defendants are trying to ride on the goodwill of the Plaintiff and its trade mark AMERICAN EAGLE OUTFITTERS / AMERICAN EAGLE.
  • The Defendants are themselves one of the largest groups of industries in India and therefore they cannot claim ignorance with respect to the trademarks of the Plaintiff much less for the same line of specialized goods being casual clothing.
  • It is not as if the Defendants are in the market for a long time and the Plaintiff has approached the Court with delay, noting that Courts look at issues differently where the Defendants are producing goods for a reasonable long period of time as compared to a case where the Defendants have recently entered into the market or are yet to enter into the market.
Court’s Order dated September 23, 2015
  • Pursuant to the aforesaid Order dated September 21, 2015, the Defendants appeared before the Court and suggested that they will remove the expression “AUTHENTIC OUTFITTERS” from its trade mark leaving only the expression “URBAN EAGLE”.
  • The Defendants further agreed to replace their existing DEVICE of EAGLE with a new EAGLE DEVICE, even though the existing DEVICE of EAGLE used by the Defendants is stated to be not deceptively similar or identical to the Plaintiff’s device.
  • The offer of the Defendants is however stated to be not acceptable to the Plaintiff who prayed that the Defendants must not use the EAGLE DEVICE at all and must also not use the trade mark “URBAN EAGLE”.
  • Relying on Marico Limited v. Agro Tech Foods Limited, 2010 (174) DLT 279, the Court refused to allow exclusive appropriation of the word “EAGLE” to the Plaintiff, all the more so in view of the submissions made by the Plaintiff itself in its reply to the Examination Report issued by Registrar of Trade Marks with respect to the cited marks. In the said Reply, the Plaintiff had argued that the well-settled judicial principle of entirety envisages that marks should not be segregated for the sake of unwarranted comparison, and that while deciding the question of similarity between two marks, the marks have to be considered as wholes, and meticulous or fragmentary comparison is not the correct way. The Plaintiff had further argued that upon such consideration as above, the cited marks, when compared with the subject mark, are phonetically, visually, structurally and conceptually dissimilar and distinguishable from the subject mark. Therefore, although all the cited marks and the subject mark share the common component “EAGLE”, it is the combining element “AMERICAN” in the subject mark that helps the subject mark create a different and distinct overall impression from all the other marks. As a concluding argument, the Plaintiff had submitted that if so many marks comprising the element “EAGLE” can co-exist peacefully on the Register of Trade Marks (a fact that is apparent from the Search Report), then there is absolutely no reason why the subject mark should not be allowed to proceed to registration.
  • In view of the above submissions, the Court noted that the Plaintiff claims exclusivity to its trade mark by use of the expression “AMERICAN” alongwith “EAGLE” and not “EAGLE” in itself. Therefore, there cannot be identity or deceptive similarity of the mark “AMERICAN EAGLE” with “URBAN EAGLE”, although the goods of both the parties are same.
  • During arguments, the Plaintiff also raised an issue of public interest, however, the Court rejected this argument stating that “URBAN EAGLE” is sufficiently distinguishable from “AMERICAN EAGLE”. Also, an issue of public interest will not be raised in the present case where the goods are only clothing, as opposed to certain cases where grave public interest would be involved such as the case of pharmaceutical goods or medicines.
  • The Court also compared the two DEVICES of EAGLE as being used by the Plaintiff and Defendants, and observed that whereas the Plaintiff’s device is a swooping eagle showing an eagle going towards earth, the Defendants’ device is of an eagle which is taking off or flying higher or ascending. Obviously, there is bound to be some sort of similarity between two devices which uses an eagle, however, it cannot be said that the device of the swooping eagle is identical or deceptively similar to an eagle which is taking off or flying higher.
  • The argument of the Plaintiff that it has a copyright in their device of swooping eagle and the Defendants therefore cannot use its device of eagle is also misconceived for the reasons stated above. Moreover, Section 13 of the Copyright Act, 1957 states that copyright is only with respect to an original artistic work and a swooping eagle device cannot by any stretch of imagination be said to be an original artistic work to be a subject matter of copyright as claimed by the Plaintiff.
  • The next date of hearing in this matter has been fixed on December 15, 2015.

Concluding Remarks

A registered trademark provides the exclusive rights to use a trademark against others, but only in the form in which it is applied and registered. In case of a composite trademark, which has various distinctive and non-distinctive elements, the right to take action against an infringer is limited to the extent that the distinctive part of the trademark is misused by the infringer. Therefore, the pertinent questions here are, what happens when a part of trademark is misused and how can the proprietor take action against the infringer.

Section 15 of the Trade Mark Act, 1999 covers the registration of parts of trademarks, where the trade mark consists of more than one feature, and for claiming exclusive right of all such features separately, one has to seek registration for each such part as a separate trademark which shall be examined independently to determine whether it can be registered or not.

Section 17 of the said Act states the effect of registration of parts of a mark and states the general proposition that registration confers on the proprietor the exclusive right to use the whole trade mark. Therefore, if the proprietor desires statutory protection for exclusive use of any part of the trade mark, then he has to apply to register that part as a separate trade mark. Further, any part of the trade mark containing a matter which is common to the trade or is of non-distinctive character will not be allowed registration. However, if the applicant is able to adduce evidence of acquired distinctiveness for such part, he may then rightly claim exclusive right for that part of the trade mark, even if it has not been separately registered.

The aforesaid view has also been taken by the Supreme Court of India in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. AIR 1955 SC 558 which held that the proprietor cannot restrain others from either using any part or word independently or in combination with other words. However, if the proprietor acquires any right by long use of those parts or words in relation to his trade, he may claim exclusive right over the same and prevent exploitation of his mark.

The aforesaid Orders dated September 21 and September 23, 2015 can be accessed here and here respectively.