WTO
The most significant "development" in terms of legislation has been the "non development" of pipeline patents for pharmaceutical and agricultural products. This resulted in the US successfully taking India through the appellate process of the WTO, the first case to go to this level.
Under Article 70.8 of TRIPs India was required to set up a mailbox system for receiving patent applications for pharmaceutical and agricultural chemical products. Further, under Article 70.9 of TRIPs India was required to grant exclusive marketing rights to products the subject of such mailbox applications. Having failed to get the necessary legislation through Parliament because of strong local opposition, the appellate body agreed with the dispute resolution body that India had failed to meet both these obligations.
Negotiations are now taking place to set a date for the implementation of this ruling.
The Basmati rice furore
No article on recent developments in India would be complete without mention of the granting of a rice patent in the United States!!
A US company, Rice-Tech successfully obtained a patent for a new rice variety with all the positive traits of the famous Basmati rice, but without some of the negative aspects. This produced an outcry in India, that the US had "stolen" Basmati rice. One can easily imagine the furore so soon after the loss of the WTO patent dispute.
However, this is far from a US/India dispute. The patent appears to show novelty and therefore appears valid. The only real issue is whether or not Rice-Tech should be permitted to call their rice "Basmati". In the US, Rice-Tech had used of the word "Basmati", unchallenged, for many years. Therefore, however aggrieved Indians may feel, it must be highly unlikely that anything can be done to stop Rice-Tech's continued use of the Basmati name. The answer lies not with the WTO but in US law and the laws of countries where Rice-Tech export their product.
Case law in India
The last year has seen further enunciation and extension of some important principles. These principles have come about in recent years as multinational companies have acted against Indian traders who have commenced use of "famous" international marks which had not been used by their overseas proprietors due to the restrictive trading regime operated by India in the 1970s and 1980s.
In Volvo AB v Volvo Steels the Mumbai High Court held that passing off could arise, even without a common field of activity, if the public would be mislead into believing there was a trade connection between the parties. The judges also reiterated that cross border reputation could suffice to establish local goodwill despite the plaintiff having no sales in India.
Most interestingly, the Court also held that once it had been established in an interlocutory application that the defendant adopted its mark dishonestly, the balance of convenience would automatically tilt in favour of the plaintiff.
Revlon v Sanita Mfg Co was in a similar vein. Revlon's trade marks REVLON, INTIMATE, and CHARLIE were being copied by the defendants, and had been for many years. The dispute dated back to the early 1970's when India's trading regime caused many companies like Revlon to abandon the Indian market. The defendants had jumped in to fill the gap, but the plaintiffs had been aware of this for many years and had even held discussions with a view to a commercial relationship.
In a complicated and long running dispute, during which the defendants had sought to cancel Revlon's marks on the grounds of non-use, Revlon eventually succeeded in an infringement action before the Delhi High Court.
An important finding in this decision was that the sale of Revlon's products in Duty Free shops in India was sufficient to constitute use of their marks so as to defend the non-use cancellation action.
Again, the court looked closely at the bona fides of the defendants' adoption of the marks. Where, as here, it seemed obvious that their adoption was dishonest, any pleas of delay and acquiescence would not succeed.
In Time Warner Entertainment v A. K. Das and others, Time Warner succeeded in protecting their Home Box Office/HBO marks against the defendants' use of Cable Box Office/CBO. Again, the court's conclusion that the defendants' adoption of the marks was dishonest was an important factor.
The court ruled (probably for the first time in India) that market survey evidence could be considered and relied upon at interlocutory stage.
Finally, in Caterpillar Inc v Jorange, Caterpillar was granted an interlocutory injunction against a local company which had commenced manufacturing and marketing apparel under the marks CAT and CATERPILLAR in the same stylised form used by Caterpillar Inc. Despite never having sold their apparel in India, Caterpillar was successful on appeal to the Division Bench of the Madras High Court, on the basis of their cross border reputation in clothing, and their local reputation in heavy earth moving equipment.
All these cases show a continued enlightened mentality on the part of the Indian judiciary, accepting that famous/well known marks are worthy of particular protection. This will provide further comfort to the growing number of multinational companies "returning" to India after perhaps two decades away, only to find local traders have commenced using their marks in their absence.
Stuart Adams is Director, Middle East, India and Africa, based in Rouse & Co International's office in Dubai.
The content of this article is to provide only a general information on the subject. Legal advice should be sought for any specific circumstances.
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