DOCTRINE OF ESTOPPEL BY ACQUIESCENCE OR WAIVER FOR INFRINGEMENT

Acquiescence as a defense:

Section 33 (1) of the Trademarks Act, 1999 provides that if the earlier Registered Proprietor has acquiesced for a continuous period of 5 years in the use of a registered trademark, being aware of that use, he is not entitled to either seek invalidation of such later mark or oppose its use in relation to goods or services in relation to which it has been so used, unless registration of such mark was applied in bad faith.

The essential for defense of acquiescence shall be:

(a)    The mark should be registered

(b)   The earlier registered proprietor should be aware of use of such registered mark for a period of 5 years or more

(c)    The subsequent Applicant/ registered proprietor has used such registered trademark for a continuous period of 5 years

(d)   The subsequent mark if registered cannot be cancelled unless registration was applied in bad faith

(e)    The subsequent mark cannot be opposed for usage in respect of goods or services in respect of which it has been so used, unless application was made in bad faith

This section clearly establishes that if there is acquiescence for a continuous period of 5 years, the usage of such mark cannot be stopped by earlier registered proprietor. Though any application or registration of such mark can be challenged either in rectification or opposition proceedings if such application was made in bad faith.

Where such doctrine applies, the proprietor of later trademark is not entitled to oppose use of the earlier registered mark or exploitation of the earlier right. Burden of proof is on the defendant.

Acquiescence vs. Consent

Acquiescence is implied consent by remaining silent spectator. Section 30 (2) (c) of the Trademarks Act provides that express or implied consent by the registered proprietor or registered as to use of the mark is a defense to infringement. But as the infringement is a continuous process this consent may be withdrawn subsequently and such acts would amount to infringement unless a defense of acquiescence is available.  In other words implied consent of 5 years can be termed as acquiescence.

Laches:

Failure to assert one’s rights in a timely manner can result in a claim being barred by laches. Laches is an equitable defense or doctrine asserted in litigation. It is defined as an "unreasonable delay pursuing a right or claim by one party in a way that prejudices the opposite party". The person invoking laches is asserting that an opposing party has "slept on its rights," and that, as a result of this delay, circumstances have changed such that it is no longer just to grant the equitable relief sought for such as an interim or temporary injunction. Laches is a form of estoppel for delay. A successful defense of laches will find the court denying the request for equitable relief. However, even if equitable relief is not available, the party may still have an action at law if the statute of limitations has not run out.

The Hon’ble Supreme court of India in Khoday Distilleries Limited vs. The scotch whisky association and others, bared challenge to “peter scot” on principles of acquiescence and/ or waiver.

 

Appellant i.e. Khoday Distilleries Limited hereinafter “Khoday” was a company incorporated under the Companies Act, 1956 and manufactured whisky under the mark “Peter Scot” since May, 1968.  Its application for registration of its mark was accepted and allowed to proceed with the advertisement, subject to the condition that the mark would be treated as associated with Reg. T.M. No.249226-B. The said trade mark was subsequently registered. Respondents came to know of the appellants mark on or about 20th September, 1974. They filed an application for rectification of the said trade mark on 21st April, 1986.  Appellant by way of affidavit explained coining of the mark “Peter Scot” where “Peter” was his father’s name and “Scot” was his nationality. Another factor behind the coining of this brand name was the internationally known British explorer, Captain Scott, and his son Peter Scott, who is widely known as an artist, naturalist and Chairman of the World Wildlife Fund. 

 

However, the application for rectification was allowed. The appellant then preferred an appeal before the High Court. One of the main ground of appeal was that in one of the affidavit filed on behalf of the respondents affirmed by Ian Barclay it was stated that the respondents were aware of infringement of mark as far back in 1974 but as no action was taken in relation thereto till 1986, therefore the application for rectification was barred under the principles of waiver and acquiescence.

 

A learned Single Judge of the High Court dismissed the said appeal and as regards the plea of acquiescence held that the acquiescence if it is to be made a ground for declining to rectify, must be of such a character as to establish gross-negligence on the part of the applicant or deliberate inaction which had regulated in the appellant incurring substantial expenditure or being misled into the belief that the respondents though entitled to, had deliberately refrained from taking any action and were unmindful of the use of the mark by the person in whose name it was registered and held that the facts of this case are not such as to warrant the conclusion that there has been acquiescence.

 

On an appeal a Division Bench of the High Court, dismissed the said appeal and appellant approached the Supreme Court against said order. 

 

Supreme Court relied on ratio laid down by Oliver, L.J., in Taylor Fashions Ltd. v. Liverpool Victoria Trustees Co. Ltd. [ (Note) [1981] 2 W.L.R.] 576

“Of course, estoppel by conduct has been a field of the law in which there has been considerable expansion over the years and it appears to me that it is essentially the application of a rule by which justice is done where the circumstances of the conduct and behaviour of the party to an action are such that it would be wholly inequitable that he should be entitled to succeed in the proceeding.”

Supreme Court observed that “Thus, in cases involving equity or justice also, conduct of the parties has also been considered to be a ground for attracting the doctrine of estoppel by acquiescence or waiver for infringement.”

The ratio laid down in M/s. Power Control Appliances and others v. Sumeet Research and Holdings, [(1994) 2 SCC 448 ] was relied, where Supreme Court held :-

26. Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches. In Harcourt v. White Sr. John Romilly said: It is important to distinguish mere negligence and acquiescence. Therefore, acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J.G.) & Co. v. Boehm. The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill.

Supreme Court observed that the question again came up for consideration in Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel and others, [(2006) 8 SCC 726] wherein it was held :-

103. Acquiescence is a facet of delay. The principle of acquiescence would apply where: (i) sitting by or allowing another to invade the rights and spending money on it; (ii) it is a course of conduct inconsistent with the claim for exclusive rights for trade mark, trade name, etc.

The delay by itself, however, may not be necessarily a ground for refusing to issue injunction.

It was opined:-

106. The defence of acquiescence, thus, would be satisfied when the plaintiff assents to or lays by in relation to the acts of another person and in view of that assent or laying by and consequent acts it would be unjust in all the circumstances to grant the specific relief.

It was furthermore observed:-

108. Specific knowledge on the part of the plaintiff and prejudice suffered by the defendant is also a relevant factor. (See Spry on Equitable Remedies, 4th Edn., p. 433.)

Taking into considerations all peculiar facts of the case as well as precedents laid down by Supreme Court it was observed that stand of respondents to object to the evidence that was produced before the learned Single Judge with regard to the increase in the volume of sale of Peter Scot, on the other hand urging that if a comparison is made of the Indian whisky and Scotch Whisky it would appear that some Indian whiskies are costlier than some of the Scottish brands.  The stand taken by the respondents is self-contradictory and is not fair and Supreme Court was of opinion that action of the respondents is barred under the principles of acquiescence and/ or waiver. 

 

As regards the question as to consideration is as to whether the use of the term Scot would itself be a sufficient ground to form an opinion that the mark Peter Scot is deceptive or confusing. The Supreme Court relied upon precedents operating in Australia and United States of America.

 

The Supreme Court observed that they are concerned with the class of buyer who supposed to know the value of money, the quality and content of Scotch Whisky. Who are supposed to be aware of the difference of the process of manufacture, the place of manufacture and their origin.  Trademark Registry, the learned Single Judge as also the Division Bench of the High Court, therefore, failed to notice the distinction, which is real and otherwise borne out from the precedents operating in the field. The SC further observed that had these tests been applied the matter might have been different.  In a given case probably SC would not have interfered but intend to do so only because wrong tests applied led to a wrong result. 

 

The Supreme Court allowed the appeal and dismissed the impugned judgement of High Court, thereby cancelling the rectification proceedings in respect of “Peter Scot’ mark abs reinstating the Registration in favour of Appellant.

India proposes to increase Patent fee by 100% under Draft Patent Amendment Rules 2013

Draft Patent Amendment Rules 2013 propose to increase the current Official fee of various Patent services by 100%. No plausible reason has been provided for such steep increase in official fee when the Indian Patent offices are lagging in delivery of services. It takes 4-5 years for a Patent to be examined in India and by each passing year the pendency is increasing. This move apparently appears to discourage the Applicants from filing and/or maintaining patents in India  and gradually reduce the pendency.

The above draft amendment in Rules does not take into consideration the additional Govt. fee suggested under earlier draft Patent Amendment Rules 2010 where for some of the services (for which no fee is due as of now) e.g. filing of sequence listing of nucleotides and/ or amino acids. The fifth schedule that was proposed to be added under earlier draft Patent Amendment Rules 2010, there is no indication of fee for same here. As there would be contradiction in fee applicable, it appears that the said draft amendments of 2010 have lost significance and proposed amendments under those draft rules 2010 would be brought afresh, especially concerning the official fee. Similarly in view of these draft amendments some of the provisions of draft Patent amendments Rules 2011 would be redundant and proposed amendments under those draft rules 2011 would be brought afresh especially concerning the formatting part of documents.  

The draft rules propose to add 10% surcharge for filing forms/ documents under physical mode. This is adding salt to injury. The e-filing platform is redundant as it supports only two banks namely SBI and Axis bank, therefore it cast a negative obligations for Applicant or its Agents/ Attorneys to have an account with said banks and only if they are capable of using the internet banking facility of those banks, they can file the Application or forms, where fee is payable. No. of banks have not been increased since last many years and this surcharge is nothing but to give monopolistic advantage to those two banks and Patent office. Even the income tax department has come to accept payment by no. of banks. In this age of plastic money there is no provision as to make payment by credit or debit cards.

USPTO is far more ahead when it comes of supporting e-filing system. They don’t require digital signature for filing documents, all they require is clean scanned copy of duly signed document. They accept payment by credit cards as well as Attorneys hold account with USPTO and all they have to do is provide a confirmation in writing (by electronic mode) to charge their account for due amount.

Levying such surcharge when the system supports bank accounts of only two banks is restrictive and arbitrary. The patent office should allow payment of fee through all banks that have been allowed license by the RBI and should not pick and choose and discriminate against any bank and their customers. 

Nothing FAIR In FRAND (Ericsson- Micromax Patent Litigation)

Ericsson filed patent infringement litigation against Micromax Informatics Ltd. and Mercury Electronics Ltd. for infringing its patents. Essentially these patents relate to use of speech codec (combination of speech coder and speech decoder) for coding the voice signal (in a compressed form) from the caller end and transmitting it via a radio link as coded/ compressed speech frames to the receiver end where it is decoded. Typically in a discontinuous transmission no coded speech frames are send while speaker is inactive. Here transmitter at regular interval sends speech parameter suitable for generation of comfort noise in the decoder.

Ericsson states in its patents that speech coders and decoders are conventionally provided in radio transmitters and radio receivers, respectively and cooperate to permit speech (voice) communications between a given transmitter and receiver over a radio link. A mobile phone is a conventional radio communication device comprising a Radio transmitter having a speech coder (for sending coded voice frames) and a radio receiver having a speech decoder.

Now various Patents that appear to have been asserted are discussed herein below:

Patent no. 203716 (IN/PCT/2001/00551/MUM): A method and apparatus for preserving perceptually relevant non-speech information in an audio signal

This intervention relates to method for first determining whether audio signal is considered to be speech or noise formation (well known) and then determining whether the audio signal includes non-speech information that is perceptually relevant to a listener and selectively overriding first determination of speech or noise in response to second.

The method (First IC) herein only determines and overrides determination carried under first step. It may either treat the non-speech information as to noise and non-relevant to listener or it may consider such non-speech information as relevant to listener. In both instances the claims are only determining and how they are determining it is not claimed at all. The first determination is prior art and consequent the second determination is nothing but an obvious determination, the moment there is determination as to audio signal as to speech or noise, the determination of relevancy begin then and there itself. Relevancy of such non-speech information is a subjective term and may vary from individual to individual.

The apparatus IC similarly refers to an apparatus that performs above method. Conventionally a mobile phone has all those components that are referred to in such an apparatus. Non tangible component such as audio signal are included therein in the apparatus. The Apparatus as such lacks novelty and is obvious for same reasons as the method claim.

The LPD in relation of above Patent was issued on January 8, 2007.

Patent no. 213723 (IN/PCT/2001/00552/MUM): Method and apparatus for generating comfort noise in a speech decoder

This invention from the title appears to relate to invention for generating comfort noise, but in effect all the claims of this Patent are identical to claims granted in above Patent.

The LPD in relation of above Patent was issued on February 1, 2008.

The International filing date is shown as November 12, 1999 in E-register of Patents, it is shown as November 8, 1999 in the LPD issued by Patent office. The Corresponding PCT Application no. is PCT/SE/1999/002073 (with International filing dated as November 12, 1999) and its national phase details on WIPO identify both Patent Application no. i.e. IN/PCT/2001/00551/MUM as well as IN/PCT/2001/00552/MUM. Apart from India the corresponding PCT national phase applications was filed twice only in South Africa as this is the country that lacks substantial examination system, but India does have substantial examination system, yet it granted identical claims in both Applications. The PCT claims are identical to claims granted in both Applications in India as available in respect of above Patent from Indian Patent office website. All these claims are silent about comfort noise generation as asserted by Ericsson.

It raises serious questions as to why identical Patents are granted to Ericsson in this matter, and raises serious questions about nature of Examination carried out by the Examiner concerned and Patent office.  

The Patent No. 213723 is very vital for Ericsson in the above litigation as it was the major claim asserted by Ericsson in their initial communication to Micromax alleging infringement. Ericsson had claimed that mapping of the above Patent (that time they did not identify the Patent no. but only the Patent Application no.) claims to the AMR speech codec and claimed that Micromax model X332 is capable to supporting AMR speech and can set up AMR speech class successfully. The claims identified in the said communication refer to different set of claims then what are made available by Patent office on their website or what was there on PCT Application when filed. Later on other Patents were also asserted but without any detailed mapping like the above Patent.      

The technology is stated to consume comparatively lesser bandwidth/space and allows the service provider to serve more customers at one point of time. This technology can also be used to cut off the noise from the caller side so that when decoded at receive side, the voice signal is clear and with least background noise. It   also suggest in one of the embodiment of invention, that some selective voice frames (dividing voice signal to frames/ sub frames), determining the noise frames and selectively avoiding transfer of such voice frames (to save lesser bandwidth and space and allowing telecom company to have more user at a time) and generating matching voice frames at the receiver end.. As the patent claims though claiming method and apparatus are essentially system based claims suggesting a particular method of performing the invention employing various components/ apparatus and not all of the apparatus may belong to the Ericsson. All these claims disclose is need and how this need can be fulfilled (receiving, coding and decoding), can be assumed by person skilled in art (I would say semi-skilled in art). It needs to be checked whether they have claimed how their coder and decoder function and if there is any novelty in such coder and decoder, considering Section 3(k) of the Indian Patents Act.

Their invention allow the telecom company to find out which one of the subscriber is using the technology and accordingly the telecom company would prefer those using the technology so that it can accommodate more subscribers at a time (those not using the technology would be dumped or asked to wait till the no. of active subscribers reduces).

Do we need to look at into who is the beneficiary of these inventions? First thing that comes into mind is telecom service provides and they are not included in this litigation (as they are already managing the telecom services of these service providers). An invention that requires involvement of at least two mobiles (subscribers) both equipped with coder and decoders and at least one telecom tower, can an infringement action lie against mobile company alone. The system and methodology is incomplete till all participants are involved. If an action can be performed collectively, then the liability should be collective in nature.       

Second, if Micromax happen to be honest and bonafide purchaser of Chip/ circuit board and it is within the express knowledge of the Ericsson that their technology (essential part is use of coding and decoding algorithms) is being manufactured and sold by said company (I believe it is also made one of the defendant in the suit). But Ericsson chose to ignore the small company as the royalty they would be getting there would be minimal compared to if they catch the mobile company (as cost of mobile would be higher than the chip/ circuit board).

The single bench of the Delhi High Court passed an ex parte interim order against Micromax and authorized seizure of documents from Micromax’s office regarding the sales and import of the mobile phones using said technology. Micromax preferred an appeal but the Divisional bench directed them to approach Single bench and approach only if they are not heard within 30 days as per the provisional of Law (CPC).  Constrained that their sale would be effected during the interregnum period, Micromax entered into an interim arrangement with the Ericsson. It appears that royalty rates are agreed between 1.25% to 2% of the sale price. The single bench referred the matter for meditation and Justice A.P. Shah (Retd.) was appointed as a mediator for proceedings.

Micromax should go against Ericsson for these 8 Patents and assertion of infringement. First of all, when they are rightful purchaser of the chip from a third party and had Ericsson sued that company alone their 1-2% royalty rates would be insignificant (as the cost of chip is comparatively low), so they come after the bigger guy to seek bigger royalty. This issue needs to be examined, is this suit bad for non-joinder for necessary party as telecom service provider is not made party here by Ericsson (question is can they make them parties randomly as it is in subscriber’s hand which telecom company they choose) and secondly can they assert patent infringement against Micromax just because some of their mobile have those chips which when used in a mobile together with communication system of service provider (at both end) makes a system that is actually claimed by Ericsson. In totality their so called system cannot work unless the signals are coded and decoded and it requires the chip with same technology at both ends (with hardware requirements of the service provider).

If this litigation is carried forward by Micromax, this could be a landmark judgment in evaluating system claims.

Novartis Patent for Beta Crystalline form of Imatinib Mesylate rejected by Supreme Court of India

Supreme Court of India while hearing the Appeal ( as a matter of exception this appeal was admitted and heard, though all appeal against Order of IPAB are to be heard by High Court first) preferred by Novartis AG against the order of Intellectual Property Appellate Tribunal (IPAB) rejected the product Patent rights for Beta Crystalline form of Imatinib Mesylate for failing in both test of invention (under Section 2(1)(j) & 2(1)(ja) as well as patentablity (under Section 3(d)). The Court consequently allowed the counter-appeal filed by two of the respondents i.e. Natco Pharma Ltd. and Cancer Patients Aid Association.

There is no separate finding on the counter-appeals preferred by Natco Pharma Ltd. and Cancer Patients Aid Association therefore it can be assumed that Novartis AG still retains the process Patent rights for manufacturing Beta Crystalline form of Imatinib Mesylate. 

It would be essential to go into the brief history of the Patent Application filed by Novartis AG for Beta Crystalline form of Imatinib Mesylate and its prosecution in India: 

1.         On July 17, 1998 Novartis AG filed Patent Application in India i.e 1602/MAS/1998, claiming priority from Swiss Patent Application dated July 18, 1997 for invention titled "Crystal modification of N- phenyl-2-pyrimidineamine derivative, process for its manufacturer and its use. The said Patent Application was opposed by way of Pre-Grant Opposition under Section 25(1) of Indian Patents Act by Cancer Patients Aid Association, Natco Pharma Ltd., Cipla Ltd, Ranbaxy Laboratories Ltd., Hetero Drugs Ltd. 

2.         Vide order dated January 25, 2006 the Assistant Controller of Patents rejected the Patent Application for following grounds

(i) Anticipated by Zimmermann Patent  (US Patent no. 5, 521,184, continuation in part of US Patent Application serial no. 08/042,232 dated September 9, 1993) and article published on May 1996 in “Nature Medicine” and Patent extension certificate issued by USPTO that mentions Imatinib Mesylate (Gleevac) as product. Also on the satisfactory proved by Natco pharma that salt normally exists in beta crystalline form which is most thermodynamically stable product.

(ii) Obvious for reasons of prior publication as mentioned above

(iii) Non Patentable under of Section 3(d) of Indian Patents Act, claims new form of a known substance without any significant improvement of efficacy.

(iv) Claiming wrong priority as Switzerland was not a conventional country on date of making of application

3.         Novartis AG filed Writ petitions against the said order of Assistant Controller of Patents in Chennai High Court as at that time the IPAB was not established, vide order dated February 23, 2007 the High Court converted said writ petitions to appeal.

4.         Simultaneously Novartis AG itself and through its POA holder in India filed two writ petitions challenging the provision of Section 3 (d) of the Indian Patent Act, as being unconstitutional and against the TRIPS obligation of India

5.         During pendency of writ petitions on April 3, 2007 the Govt. of India brought provisions as to appeal to IPAB with effect from April 2, 2007 and consequently the 5 appeals were transferred by High Court to IPAB vide order dated  April 4, 2007.

6.         The Technical member (Patents) to the IPAB previously hold post of the Controller General of Patents, therefore Novartis AG filed Petitions for ceasing the Technical member (Patents) from hearing the appeals. By Order dated July 20, 2007 the petitions were dismissed relying on doctrine of necessity.

7.         Novartis AG challenged the order by a writ petition before the Chennai High Court and the High Court directed IPAB to constitute a special bench of Chairman, Vice Chairman to hear the appeals and for seeking assistance of Scientific advisers, if they found fit. 

8.         Natco Pharma filed a SLP before Supreme Court against said order for appointment of new Technical Member to hear instant appeals because of involvement of high technology in the matter as well as for statutory requirement of presence of technical member in the Board having special qualification. Supreme Court vide order dated 1, 2008 directed reconstitution of IPAB including Dr. P.C. Chakraborti, Assistant Controller as Technical Member and to hear appeals on daily basis from November 3, 2008.

9.         IPAB vide Judgment dated June 26, 2009 allowed only the process claims for manufacture of Beta crystalline form. 

10.       Against the impugned judgment by IPAB, Novartis AG approached the Supreme Court directly and after hearing all the parties, a very detailed, well-reasoned order was passed by Supreme Court of India on April 1, 2013.

While adjudicating on the issue Supreme Court considered interplay between qualifying criteria of invention and criteria of patentability of an invention. It had to consider if the product qualifies as “invention” within the meaning of clauses (j) and (ja) of section 2(1), can its patentability still be questioned and denied on the ground that section 3(d).

Few historic date concerning the development of product Imatinib, Imatinib Myselate and Beta crystalline form of Imatinib Myselate are as follows:

April 28, 1994                        Application for derivatives of N-Phenyl-2 pyrimidine-amine including Imatinib filed before USPTO by Jurg Zimmermann

January 1, 1995                     On March 26, 1999 Parliament passed the Patents (Amendment) Act 1999 (Act No. 17 of 1999) which amended the provisions of the Patents Act 1970 retrospectively, with effect from January 1, 1995, the date when the TRIPS Agreement came into force. By the Amendment Act of 1999, section 5 of the Parent Act was amended to provide for making “a claim for patent of an invention for a substance itself intended for use or capable of being used, as medicine or drug. The Amendment Act further incorporated in the Parent Act, Chapter IVA, which contained provisions for grant of exclusive marketing rights in respect of pharmaceutical substances for which a claim for patent was made under section 5 of the Act. The Amendment Act of 1999 thus complied with Article 70(8) and (9) of the TRIPS Agreement.

January 1996                         Cancer Research published an article under the title “Inhibition of the Abl Protein-Tyrosine Kinase in Vitro and in Vivo by a 2- Phenylaminopyrimidine Derivative” authored by several people, including Jurg Zimmermann. There was detailed discussion about the antitumoral properties of Imatinib and its methanesulfonate salt, i.e., Imatinib Mesylate.

May 28, 1996                         Patent granted by USPTO (5, 521, 184) referred herein after as Zimmerman Patent

July 18, 1997                          Application filed in Switzerland by Novartis AG, for grant of Imatinib Mesylate Patent to Beta Crystalline Form

April 9, 1998                          Novartis AG filed for Investigational New Drug Application (IND #55,666) for Gleevac before Food and Drug Administration (FDA) USA

July 17, 1998                          Application filed in India by Novartis AG, for grant of Imatinib Mesylate Patent to Beta Crystalline Form (1602/MAS/1998) claiming priority from Swiss Patent Application

November 30, 1998              Switzerland notified as convention country

January 18, 2000                   Novartis AG made application for Patent for Beta Crystalline Form of Imatinib Mesylate in USA

February 27, 2001                 Novartis AG filed for Original New Drug Application (NDA #21-335) for Imatinib Mesylate before Food and Drug Administration (FDA) USA. It declared that active ingredient of the drug is Imatinib Mesylate. The drug substance, active ingredient, drug product (composition/ formulation) and method of use were declared to be covered by US Patent no. 5, 521, 184. It was declared that said patent covers composition, formulation and/or method of use of Imatinib Mesylate.

May 10, 2001                         FDA approval granted to drug “Gleevac (Imatinib Mesyalte) 50 mg and 100mg capsules.

July 3, 2001                            Patent Term extension application made for US Patent no. 5, 521, 184 and term extended to further 586 days from original expiry date of May 28, 2013

March 27, 2002                      Novartis AG, made application for grant of Exclusive Marketing Rights (EMR) to Indian Patent Office

November 10, 2003              EMR granted to Novartis AG, by Indian Patent office

November 23, 2003              US Appellate Court reversed rejection of Beta Crystalline Form of Imatinib Mesylate by the USPTO

January 1, 2005                     Provisions related to Product Patent introduced w.e.f. January 1, 2005 in India

May 17, 2005                         Patent for Beta Crystalline Form of Imatinib Mesylate Granted in USA

January 25, 2006                    The Assistant Controller of Patents rejected the Patent Application for Beta Crystalline Form (1602/MAS/1998) of Novartis filed in India on basis of pre Grant oppositions

February 23, 2007                  Writ Petitions filed against the Assistant Controller’s order converted into Appeals

April 3, 2007                          Govt. of India brought provisions as to appeal to IPAB with effect from April 2, 2007

April 4, 2007                          Appeals of Novartis AG were transferred by High Court to IPAB.

June 26, 2009                         IPAB allowed only the process claims for manufacture of Beta crystalline form and rejected the product and use claims for beta crystalline form

April 1, 2013                          Supreme Court rejected the appeal of Novartis AG against the judgment of the IPAB

Publication abroad by existence of the design in the records of the Registrar of designs which is open for public inspection cannot be said to be “prior publication”

A divisional Bench of Delhi High Court referred a revision to full bench of Delhi High Court, to consider as to whether an other Divisional Bench of this court in the case of Dabur India Ltd. Vs. Amit Jain & Anr. 2009 (DEL) has correctly held that publication abroad by existence of the design in the records of the Registrar of designs which is open for public inspection cannot be said to be “prior publication” as per the meaning of the term as found in Sections 4(b) and 19(1)(b) of the Designs Act, 2000. The earlier Division Bench had concurred with the view of learned Single Judge of Calcutta High Court in the case of Gopal Glass Works Ltd. Vs. Assistant Controller of Patents & Designs 2006 (Cal.) where it was held that mere publication of designs, specifications, drawings and /or demonstrations by the patent office in a foreign country would not in itself amount to publication for rendering a design registered in India liable to cancellation. 

The Divisional Bench doubted the correctness of the ratio in the judgments in the cases of Dabur India Ltd.  (Delhi 2009) and Gopal Gas Works Ltd. (Kolkata 2006) for having overlooked the provision of Section 44 of the Act which provides that a design which is registered abroad in a Paris Convention country, and to which convention India is a signatory, gets priority over an Indian registered design, provided that the person who gets the designs registered abroad in a Paris convention country, within six months of the date of the application made in the said convention country abroad, applies and gets registration in India, hence the reference order was made to Full Bench.

In Dabur India Ltd. it was held that publication abroad by existence of the design in the records of the Registrar of designs which is open for public inspection cannot be said to be “prior publication” as per the meaning of the term as found in Sections 4(b) and 19(1)(b) of the Designs Act, 2000 (hereinafter referred to as "the Act").

In Gopal Gas Works Ltd.  it was held that that mere publication of designs, specifications, drawings and /or demonstrations by the patent office in a foreign country would not in itself amount to publication for rendering a design registered in India liable to cancellation. 

The Full Bench in order to answer the reference with clarity, the Court framed following issues/aspects to approach the issues/ aspects independently as well as  inter-play and inter-relation of those issues as regards common points:

(i) When Section 19(1) (a) of the Act provides for cancellation of a design registered in India on account of a design previously registered in India, whether the said provision has to be read literally only i.e only a design registered in India can be basis for cancellation of a subsequent design registered in India and not a design registered abroad in a convention country or whether the provision of Section 19(1) (a) takes within its sweep and includes a previous design registered abroad in a convention country for cancellation of a design registered in India. Putting it differently, is a design previously registered abroad in a convention country a ground under Section 19(1) (a) of the Act for cancellation of a design subsequently registered in India. 

(ii) If under Section 19(1)(a) a design registered in a convention country abroad is a ground for cancellation of a design registered in India, is this rule absolute or the rule falls in those circumstances where the design registered abroad is not applied to be got registered India within a period of six months of making of the application in a convention country abroad. Be it noted that the issue of design registered abroad along with its prior publication can be under certain circumstances a basis of cancellation of a design which is registered in India, however, that is the subject matter of Section 19(1)(b) and not 19(1)(a), because the aspect of prior publication is within the subject matter of Section 19(1)(b) as stated in the immediately following issue. 

(iii) If a design registered in a convention country abroad is not a ground for cancellation of a design registered in India under Section 19(1)(a), then, whether the registration abroad entitles cancellation of a design registered in India because the registration abroad conclusively amounts to prior publication as per that expression found in Section 19(1)(b) read with Section 4(b) of the Act.

(iv) What is the meaning of the expression “publication abroad”/“published abroad”, for it then to be argued that on account of such publication abroad, the design registered in India becomes liable to cancellation in terms of Section 19(1)(b) of the Act.

An offshoot of the aforesaid issues (iii) and (iv) above is that whether in all circumstances and all cases, the record of the Registrar of Designs open to public inspection abroad should be held to be prior publication so that on the basis cancellation can be applied under Section 19(1)(b) of the Act for the design registered in India, and if, the record of the Registrar of Designs in a convention country abroad is to be taken as a basis for cancellation of a design registered in India, whether it is an unqualified rule or whether it has to be examined as per the facts of each case that record of the Registrar of Designs in a convention country abroad does or does not amount to prior publication in terms of the expression in Section 19(1)(b) and Section 4(b) of the Act.

Various provisions of the Design Act were referred. Few most relevant of these are

Section 4. Prohibition of registration of certain designs.- A design which-

 (a) is not new or original; or 

 (b) has been disclosed to the public anywhere in India or in any other country by publication in tangible Form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or 

(c) is not significantly distinguishable from known designs or combination of known designs; or 

(d) comprises or contains scandalous or obscene matter, shall not be registered.

Section 19. Cancellation of registration

(1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:-

 (a) that the design has been previously registered in India; or

 (b) that it has been published in India or in any other country prior to the date of registration; or

 (c) that the design is not a new or original design; or 

 (d) that the design is not registrable under this Act; or

(e) it is not a design as defined under clause (d) of section 2.

The Court concluded the entire discussion as follows:

(i) Existence of a design registered abroad in a convention country is not a ground under Section 19(1)(a) for cancellation of a design registered in India.

(ii) The provision of Section 44 does not have the effect of changing the literal interpretation of Section 19(1)(a) inasmuch as under Section 44, the foreign registered design becomes an Indian registered design, although, the date of registration of the foreign registered design which is registered in India will relate back and have retrospective effect from the date of application first made in the convention country abroad. Once, the foreign registered design becomes registered in India, the very fact that it is an Indian registered design it will be a previously registered design in India, and by virtue of the priority rule the same will be a ground for cancellation of a design subsequently registered in India on an application made after the date of the priority date given of the application made abroad for registration of the design in a convention country.

(iii) The benefit of foreign registered design after its registration in India for seeking cancellation of an Indian registered design under Section 19(1)(a) will only be available if the application for registration in India is made within six months of the date of the application made in the convention country abroad, notwithstanding there may be prior publication in this interregnum six month period.

(iv) In case, the application for registration in India is not made within the statutory permissible period of six months of having made the application abroad, then, the design registered in India in the meanwhile in six months period cannot be cancelled under Section 19(1)(a), though, the foreign registered design owner on proving of prior publication can have an effective defence to the infringement action filed by the Indian registered design owner and which defence against an infringement action is available vide Section 22 relying on the ground of prior publication under Section 19(1)(b) read with Section 4(b) of the Act.

(v) What is publication is essentially a question of fact to be decided as per the evidence led in each case. Existence of a design in the publication record/office of a Registrar of design abroad may or may not depending on the facts of each case amount to prior publication and there would be prior publication only if the prior registered design is made public and has that much necessary clarity as applied to a specific article capable of judged by the visual appearance or the eye of the mind, that by use of the said knowledge and information in the public record of the Registrar of design office, an article can be made using that design which will be a piracy or violation of that design i.e putting it differently unless and until there is complete clarity and understanding to the naked eye or the eye of the mind of the foreign registered design as found in the public record of the Registrar of design qua a specific article, it cannot be said that such public record will amount to prior publication.

Mere posting of the letter on the website does not constitute communication of the objection or proposal in writing as required by Rule 38(4) of Trade Marks Rules, 2002

The Mumbai HC held that placing the notice of the website does not constitute compliance with that Rule 38(4) of the said Rules. At the highest, it can be said to have been communicated only on the date on which it was noticed on the website. If a hearing is applied for within a month the application for registration cannot therefore, be deemed to have been abandoned for want of compliance or seeking hearing as envisaged under Rule 38(5).

Brief facts of the case:

(i)        On 01.10.2010, petitioner applied for registration of the mark “CMA” in class 41.

(ii)       On 30.03.2011, petitioner vide a letter informed the Respondents that it had not received any response in respect of its application for registration despite several enquiries having been made from time to time and that as a result thereof, it was unable to provide training and award degrees / certificates on the “newest branches of management and accountancy”.

(iii)      On 19.09.2011 the Application was examined under provisions of the Trade Marks Act, 1999 and Trade Mark Rules, 2002 and afterwards uploaded on the respondents’ website on some later date. Admittedly, the letter / examination report dated 19.09.2011 was not forwarded to the petitioner or its advocates. It was merely placed on the respondents’ website

(iv)      On 13.03.2012 the petitioner noticed on the respondents' website the examination report.

(iv)      Vide letter dated 28.03.2012, the petitioner's advocate requested the respondents to treat the date of downloading from the website as the date of the petitioner's knowledge of the order contained in the said letter / examination report dated 19.09.2011 ; exercised the option for furnishing the objections and applied for a hearing.

(V)       Vide letter dated 30.03.2012, the petitioner's advocate applied for a hearing, which was denied to them.

The relevant provision dealing with above issue is Rule 38 of the Trademark Rules, 2002 and it is reproduced herein:

38. Expedited examination, objection to acceptance, hearing :-

xxx

xxx

xxx

(4) If on consideration of an application for registration of a trade mark or on an application for an expedited examination of an application referred to in sub-rule (1) and any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, modifications or limitations as he may think fit to impose under sub-section (4) of section 18, the Registrar shall communicate such objection or proposal in writing to the Applicant.

(5) If within one month from the date of communication referred to in sub-rule(4), the applicants fails to comply with any such proposal or fails to submit his comments regarding any objection or proposal to the Registrar or apply for a hearing or fails to attend the hearing, the application shall be deemed to have been abandoned.

The Court observed that Trademark Registry was bound to communicate any objection to acceptance or proposal to acceptance subject to conditions in writing to the Petitioner/ Applicant. The Registry admittedly did not do so. Nor did they indicate any rule or practice by which the petitioner was bound legally to take notice of anything that is posted on their website. Rule 38(4) by itself does not require an applicant for registration to inspect the respondents' website. The petitioner therefore cannot be imputed with the knowledge of the said letter dated 19.09.2011. The Court held that placing the notice of the website does not constitute compliance with that Rule 38(4) of the said Rules. The mere posting of the letter on the website does not constitute communication of the objection or proposal in writing as required by rule 38(4). The letter dated 19.09.2011, at the highest, can be said to have been communicated to the petitioner only on the date on which the petitioner noticed it on the website viz. 13.03.2012. Within one month thereof, the petitioner's advocate by the said letter dated 30.03.2012 applied for a hearing, which he has been denied thus far. The petitioner's application for registration cannot therefore, be deemed to have been abandoned.