In India, the laws relating to the intellectual property rights including patents, copyrights, trademarks, designs etc. are well established and comprehensive. In this article, we are going to see the landmark judgments in the field of patent infringement and passing off. But before we go any deeper, let’s understand the meaning of the above said concepts.
It is a well-established principle that the owner of a patent gets exclusive rights over its patented invention use and has the right to exclude others from using the same. It prevents third persons from using, making, selling or importing such patented products without consent of the owner. If any person does so, it is called as an infringement and the owner can file a lawsuit for prevention of such infringement.
Even though the Patents Act, 1970 does not explicitly lists out the activities that amounts to infringement, any act done by a third person without the consent of the patent owner amounts to infringement. Any commercial use without consent also is deemed to be an infringement. However, activities such as government use (Section 47), research and development (Section 47(3)), supply of medical drug to medical institutions by government (Section 47 (4)), patented invention used on foreign vessel ( Section 49) and bolar exemptions and parallel imports ( Section 107 A) are exceptions to the infringement rule.
On the other hand, passing off means an unauthorized use by person not being a prior user of an identical or similar mark to tarnish the goodwill of the prior user. Passing off is majorly used in Trademarks, where the unregistered prior user of trademark has the right to stop the subsequent brand user. In such cases, the real owner or prior user under section 27 can initiate a suit against the person who misrepresents the mark and makes the general people to believe that both products have the same source.
Now let us proceed to study the recent trend of the courts with respect to above mention concepts. As we know that judgments shape the applicability of the law largely, hence it’s important to keep a track of such judgments as well.
The following are some of the landmark judgments on patent infringement and Trademark passing off-
- Koninklijke Philips Electronics N.V. v. Rajesh Bansal & Ors. CS (COMM) 24/2016- In this case, the issue was whether there has been an infringement of standard essential patent on the part of defendant in respect of a DVD playback technology? Here, the court held that there has been an infringement by defendant in using EFM and demodulation technique in the defendants’ products, which is essentially the decoding device without which the DVD will not work. The defendants also failed to prove the legitimate sources were in fact licensees of the plaintiff as claimed by them and thereby the court ordered for the payment of royalty to the plaintiff at USD 3.175 from the date of institution of suit till mid- 2010 and also as the defendant was a ex- employee of the plaintiff’s company, the court ordered the defendant to pay a sum of INR 5 lakhs as fine.
- Neon Laboratories Ltd. v. Medical Technologies 2015 SCC Online SC 905 ( Civil appeal no. 1018 of 2006)- In this case, the medical technologies filed a passing off suit against Neon for using the mark ROFOL in 2004. As according to petitioners they were using a similar mark PROFOL since 1998. Here, the defendants contended that they were the prior users since they registered the mark in the year 1992 itself. The Supreme Court held that the prior application for registration is of no use as the said mark has started 12 years after the use of their rival’s mark.
- S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683. – In this case, the appellant was a renowned Halwa shop owner with the name “IruttuKadhaiHalwa” and the respondents were a registered proprietor of a trademark “IruttukadaiHalwa”. Here, the Delhi High Court observed that a passing off action can be brought even against the registered proprietor of the mark. The trademark exists independently of the registration and that the registration only affords the extra protection. If at all, there is a conflict between two of the registered proprietors, the evaluation of better rights are necessary to determine who will get the superior rights. \
- Mark Sharp & Dohme Corporation & anr. v. Aprica Pharmaceuticals Private Limited CS (OS) 1236/ 2013- In this case, the issue was whether the defendants launch of ECOGLIPT in the Indian market would lead to patent infringement of the plaintiff’s SITAGLIPTIN”? The court held that the defendants infringed the patent of plaintiff blatantly. It further observed that even if the defendants did not commercially launch the same, its launch would cause irreparable damage to the plaintiffs. The court ordered the defendants to pay the cost.
- Blue hill Logistics Private ltd. v. Ashok Leyland ltd. and ors. 2011 (48) PTC 564 (Mad). – In this case, the plaintiff filed a suit for infringement and passing off against defendants. The defendants were using the mark “LUXURIA” and the plaintiffs were using the mark “LUXURA”. The court held that buyers of buses and buyers of bus tickets are two different things and not the same. The infringement is only possible when both the parties are engaged in similar trade. Here, as this essential component is missing the plaintiff cannot claim for infringements.
- Interdigital Technology… v. Xiaomi Corporation & ORS. (I.A. 8772/2020 in CS (COMM) 295/2020- In this case, the Delhi High Court granted an interim injunction against the order of a Wuhan Court with respect to anti-suit injunction filed by Xiaomi involving the Standard Essential Patents of 3G and 4G. Here, it was held that a Wuhan court cannot have jurisdiction for the enforcement of patent in India. It was observed that the Wuhan court and Indian courts are different and international judgments must be in conformity with the municipal law, public policy and justice.
- CDE Asia Limited v. Jaideep Shekar & Anr. ( CS (COMM) 124/ 2019)- In this case CDE Asia limited filed a suit for infringement against the defendants on the ground that the defendants infringed its patent and design relating to “system device process for classification of various materials”. The defendants filed an application for the rejection of plaint under Section 25 of the Patent Act and also on the ground that the cause of action did not arise in Delhi. As the defendants have operations at Delhi and also because patents begins from the date of grant the application by the defendants were rejected and stated that the suit is maintainable. Further, the court observed that the defendants have alternative options so they do not have the riht oppose and counter- claim.
- Bristol Myers Squibb Holdings v. NATCO Pharma ( CS (COMM) 342/2019 & 1A No. 9768/ 2019)- In this case, NATCO Pharma the defendants I the case filed a suit for stay of the proceedings under section 10 of CPC as already a suit is filed against the plaintiff in Hyderabad. In Hyderabad, the plaintiffs had actually filed for infringement of patent and injunction restraining groundless threats etc. Here, the court held that the suit in Delhi need not be stayed as relief was not claimed under Patent Act but under Specific Relief Act. The court dismissed the interim application stating that the defendant’s suit was abuse of process of law.
- Indoco Remedies v. Bristol Myers Squibb CM APPL. 602/2020- In this case, the Delhi High court granted the interim injunction on the ground that Indoco’s drug ‘Apixabid’ infringed the Bristol Myer’s patented drug ‘Apixaban’. Later on, Indoco filed a suit for allowing the sale of 58,000 strips of drugs that it had already manufactured before the injunction and in public interest. However, the court did not lift the injunction by citing that they could not prove the insufficiency of Apixaban drugs in the market and or that it was not affordable. Such a lifting of ban is possible only when there is prima facie case.
- Monsanto Technology LLC & Ors v. Nuziveedu Seeds Ltd. & Ors. MANU/SC/0027/2019- In this case, a DNA sequence called NAS was patented, it provides insect tolerance to the plants. On appeal from a single judge bench to the Division bench the defendants tried for counter claim and revocation summarily. However, the Supreme Court held that revocation of a patent requires a trial and it cannot be conducted summarily. Thereby, the suit was transferred to the single bench judge for a complete trial with regard to granting injunction.
Intellectual property regime in India took a revolutionary road in the last decade. There were profound changes brought in the field of IP over the years. Also, there has been an unprecedented developments in laws laid down by the courts in India. The article tries to provide a brief summary of certain landmark judgments that took place in the last decade and analyses the recent trends in the field of law.