While the pandemic continues to influence businesses (especially their bottom lines and other internal budgets), it hasn't necessarily brought intellectual property ideation, protection, commercialization and enforcement to a halt. In fact, businesses have found, and continue to find, new ways in which they create and protect their various intellectual properties.
Companies engaged in the pharmaceutical and FMCG industries, especially, continue to commit enormous resources, including time and money, into the creation, promotion and commercialization of their various intellectual property rights. Such activities, on some occasions, tend to push the boundaries of intellectual property law and, as a result, end up in litigation.
In this latest edition of the Intellectual Property Newsletter, we examine some key and interesting developments across patents, trade marks and copyrights. We examine the decision of the Division Bench of the Delhi High Court on a case of double patenting, before looking at a few decisions emanating from Courts across India on key aspects of trade mark law such as delay in filing suits, comparative advertising, trade dress litigation. We also look at, in the light of the pandemic, how parties to litigation are raising the defence of the effect of the pandemic on trade mark disputes in the pharmaceutical industry. The Newsletter also carries a brief analysis of a recent judgment in the fast-emerging aspect of arbitrability of intellectual property disputes.
Additionally, the Newsletter also carries some interesting updates on enforcement of copyright, especially over OTT platforms as companies continue to fight piracy on digital platforms. We then round up the Newsletter with some interesting updates on various areas of intellectual property law, including from abroad.
Dapagliflozin and the case of double patenting1
n a recent judgment, a Division Bench of the High Court of Delhi dismissed 9 (nine) appeals, filed by the pharmaceutical giant Astrazeneca AB ("Astrazeneca"), challenging the two orders2 dated November 02, 2020 and November 18, 2020 passed by two separate benches of Single Judges. In both the orders, the court concluded that Astrazeneca is not entitled to any interim injunction restraining Indian pharmaceutical manufacturers from manufacturing and selling pharmaceutical products which are alleged to be in breach of Astrazeneca's patents for Dapagliflozin ("DAPA") covered under patents bearing Indian Patent numbers 205147 ("IN 147") and 235625 ("IN 625"). The nine companies involved in the suit are Intas Pharmaceuticals, Alkem Laboratories, Zydus Healthcare, Eris Lifesciences, USV Pvt Ltd, Torrent Pharmaceuticals, MSN Laboratories, Micro Labs and Ajanta Pharma ("Defendants").
IN 147 expired on 4th October 2020, while IN 625 is valid till 15th May 2023. Astrazeneca argued before the Single Judge and Division Bench that DAPA is disclosed in IN 147, but it is claimed only in IN 625. Astrazeneca also argued that IN 147 is the genus patent which only covers the core structure/the Markush claims (that is a patent covering a group of compounds, disclosing a possibility of different permutations and combinations running into several million structurally diverse compounds), whereas IN 625 is the species patent specifically claiming DAPA.
In the suits and the appeals, the Defendants challenged the infringement claim on several grounds, including the invalidity of IN 625 itself. The Defendants argued that since DAPA is covered under IN 147 as per Astrazeneca's admission, IN 625 could not have been granted for the same invention. Therefore, IN 625 was invalid in the first place and hence, no injunction could be granted with respect to IN 625. The Defendants also argued that since IN 147 had expired, there could be no injunction with respect to IN 147 as well.
In the appeal, the Division Bench upheld the decision of the Single Judges and opined that once Astrazeneca claimed the action of the Defendants of manufacturing medicines having DAPA to be an infringement of both IN 147 and IN 625, they are deemed to have admitted DAPA to be the invention subject matter of both the patents. The invention embodied in DAPA can be protected under one patent only and the same alone disentitles Astrazeneca from any interim relief.
The Division Bench was of the prima facie view that once Astrazeneca, before the United States Patent and Trademark Office, applied for and agreed to the validity period of US patent equivalent of IN 625 ending on the same day as the validity period of the US patent equivalent to IN 147, then in India, they are not entitled to claim different periods of validity of the two patents.
The position adopted by the Division Bench is sound on facts, has been settled in law for a long time, and is commonly referred to as double patenting prohibition. On the other issues involved in the case such as evergreening of patents, the Division Bench has rightly reasoned that when more than one patent is granted for one invention, it would grant a fresh round of 20 years' term protection.3 It would go against the legislative intent if two separate periods of protection are provided to one invention.
DAPA is sold under the brand name 'Farxiga' amongst others, and is a medication used to treat type 2 diabetes. As India has a huge market for diabetes drugs, this judgment provides tremendous business opportunities for generic brands and manufacturers in India who already had launched the product and those who intend to launch.
Packaging of biscuits - What constitutes infringement?
The Single Judge of the Delhi High Court in the case of Britannia Industries Limited v ITC Limited and Others.4 refused to grant relief to Britannia Industries ("Plaintiff"), in a suit brought for trade mark infringement and passing off. The Court ruled that the packaging and trade dress of the ITC's ("Defendants") 'Sunfeast Farmlite 5-Seed Digestive' biscuits was prima facie not deceptively similar to the Britannia's 'Nutri Choice Digestive' biscuits.
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