Jun 21

RKD NewsNet June 2021 - Volume II

From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar

International News

Ayes and Nays of “covered” and “disclosed’ in a patent

Astrazeneca AB (Astrazeneca) filed an application at the Delhi High Court seeking an interim injunction for restraining Emcure Pharmaceuticals Ltd. (Emcure) from making, selling, distributing, exporting, offering for sale, products comprising the compound TICAGRELOR under the brand name TICAPLAT as it infringed Astrazeneca’s patents: IN 209907, IN 247984 and IN 272674. Emcure launched a generic version of the drug BRILINTA sold by Astrazeneca.

Background of the case:

Astrazeneca owned a genus patent, IN241229 (IN 229), which expired in 2018 and included a Markush formula wherein TICAGRELOR was covered within its scope but was not specifically disclosed anywhere in the patent. A subsequent patent, IN209907 (IN 907) is the species patent and though there were other related patents also, Astrazeneca confined its arguments qua IN 907. The priority date of IN 229 is 22nd July, 1997 and was published on 4th February, 1999 whereas the priority date of IN 907 is 4th December, 1998. Pursuant to IN 229, no commercially viable drug was manufactured or tested and the drug was sold under IN 907. Form-27, which discloses data regarding working of the patent, disclosed sales figures for the period 2013-2019, against the patent IN 229 under the brand name BRILANTA.

Analysis of the case:

Emcure argued for unpatentability under section 3(d), IN 229 being the genus application and IN 907 being the species patent but the product TICAGRELOR was shown to be of high potency, high metabolic stability, and demonstrated bio-availability and therefore, IN 907 passed the test of enhanced efficacy under section 3(d). The judgment will at least convince the pharmaceutical industry that all is not lost under section 3(d).

As regards to the information filled in Form 27 for the working of the patent, it was only after BRILINTA was manufactured and tested under IN 907, Astrazeneca claimed that it has worked even under IN 229 for the reason that IN 907 is a species of the genus / Markush formula IN 229. It thus stated that there was nothing wrong if the working statement was made under the genus patent after the drug was tested.

IN 907 also weathered the storm of anticipation in view of the priority date. The date of publishing of IN 229 is 4th February, 1999, whereas the date of priority of IN 907 is 4th December, 1998. In view of this, the contents of IN 907 could not have been anticipated in terms of section 13 of the Patents Act, 1970, as the other application was not published till then.

Emcure claimed that the active ingredient TICAGRELOR is disclosed in IN 229, validity of which expired in 2018, and the product patent under IN 907 is hit by anticipation under section 13(1) (b) read with 64(1)(a) of the Patents Act, 1970. Emcure also tried to bring the dichotomy between disclosure and coverage to the fore. It relied on a judgment of the Supreme Court of India2 suggesting that the product under IN 907 as claimed, is covered under IN 229 and disclosed therein, thus, IN 907 is not a valid patent. Further, it stated that the teaching of IN 907 being available in IN 229, Astrazeneca cannot claim extension of the term of the patent. The Delhi High Court referred to the Supreme Court ruling which stated that the dichotomy that is sought to be drawn between coverage or claim on the one hand and disclosure enablement / teaching in a patent on the other hand, strikes at the very rationale of the law of patent. It held that in no uncertain terms that a species patent should not be granted once a genus patent has been granted. However, the present case was not a case of a dichotomy between coverage and disclosure. Claim 8 of IN 229 specifically listed 144 compounds and specifically claimed 134 compounds, but TICAGRELOR does not find mention in any one of them. On the basis of the facts, the compound TICAGRELOR was produced and marketed under IN 907 even though its formula is covered under Markush formula in IN 229. The date of expiry of patent IN 907 was 2nd December, 2019 and Emcure had already launched the generic product and therefore, the interim injunction could not be granted. However, Emcure was directed to maintain its accounts from the date of launch of its product till 2nd December 2019.

Other learnings from the case:

While the court re-iterated general principles of claim drafting, it also referred to the fact that for invalidating a patent, each claim must be invalidated separately and independently as it is quite likely that some claims may be valid even while others are invalid. The Court also drew similarity to Markman hearing conducted in USA for defining scope of the claims as most of the judges in India also try to understand the scope and the meaning of the claims including its terms. When the word “comprising” is used in a claim in a patent, it includes any other element besides the elements claimed in the patent when the word is used.

Novartis AG Vs. Union of India & Ors (2013) 6 SCC 1.

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The Jesus and Mary Chain fighting for its second chance

Scottish alternative rock band ‘The Jesus and Mary Chain’ (“the Band”) has filed a lawsuit (Reid v. Warner Music Group Corp., U.S. District Court for the Central District of California, No. 2:21-cv-04806.) before the California District Court against Warner Music Group (“WMG”) alleging copyright infringement and seeking declaratory relief. The Band was formed in East Kilbride, Scotland in 1983 by 2 brothers- Jim Reid and William Reid.

Relevant Provision of the US Law

As per Section 203 of the US Copyright Act, 1976, songwriters and recording artists have the right to terminate their old grants of rights to record labels after 35 years from the release of those works. This is basically a second chance for the artists to own the rights in their works.

In January 2019, the Band sent a termination notice to Warner Music Group with respect to its albums- Psychocandy, Darklands (1987), Barbed Wire Kisses (1988), Automatic (1989), and Honey’s Dead (1992), as well as several EPs and singles, that had completed or were about to complete 35 years and whose rights were qualified under Section 203 to revert to The Jesus and Mary Chain.

Source- spotify.com

We do not claim any copyright in the image used. It has been used for academic and representational purposes

In response to this notice WMG disregarded the Band’s claim and stated that it was the U.K. law that applied to the matter, under which the Band never owned any copyrights. WMG stated that its predecessor WEA was the ‘creater’ of the abovementioned works and also the first owner of the copyright in them when the Band entered into an agreement with WEA in 1985. Hence WMG claimed that the Band never owned any copyrights in the recordings and hence could not terminate them.

Aggrieved by the fact that, despite the law returning the US rights to the band, WMG is continuing to exploit its recordings and thereby wilfully infringing upon its copyrights, the Band has now approached the Court seeking a declaratory relief and statutory damages amounting to USD 2.55 million for wilful copyright infringement.

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Brahma Kamal

-Dr. Mohan Dewan

Last night after sunset a Brahma Kamal bloomed in our garden. This queen of the night lasts but one night. It blooms and withers the next morning. It is said to be the bearer of good blessings. In Hindu mythology, it is said that the flower was created by Brahma for Shiva to give the elixir of life when Shiva placed the Elephant's head on Lord Ganesha. After the nectar flowed from the Kamal on Lord Ganesha, its purpose was complete and the flower withered away.

Last month our laburnum tree flowered and renewed my hope in the world. Last night the Brahma Kamal created another emotion in me: gratitude.

Grateful for being blessed to see so much beauty in such a precious little thing for so little a time. Grateful that I was able to see it bloom, knowing that it would wither away so soon. Its short life was so meaningful. Life does not have to be long, but it can be joyfully beautiful. I was grateful to be alive to see such beauty in nature. Live like the Brahma Kamal, pure and simple, asking nothing in return, not even to see the sunrise in the morning, but giving so much beauty when it is alive, a blessing for the beholder to see and receive such beauty and feel grateful for.

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A Battle for the Bold!

PepsiCo India has dragged the Mumbai-based beverage major Parle Agro to the Delhi High Court by alleging trademark infringement over the use of the tagline ‘For The Bold’ by Parle for its beverage B-Fizz. Cans and bottles of the beverage displayed the tagline “Be the Fizz! For the Bold!”.

As a fresh attempt to grab a larger market share in the fizzy beverage category, Parle Agro had launched the soft drink in October 2020, after the success Frooti & Appy Fizz.

On the other hand, the US-based snacks and beverage giant has argued in its petition that it has used “For The Bold’ as a tagline for its tortilla chips’ brand “Doritos” since 2013.

PepsiCo India has sought a permanent restraint together with damages worth INR 2 Crore against Parle Agro. Furthermore, PepsiCo has also sought an order from the court to allow the destruction of all products including cans, bottles, packaging material, carry bags, pricing stickers, billboards, promotional material, brochures, letterheads, signboards, cash memos, pamphlets, cartons or any other items of whatsoever description and nature, bearing the tagline/trademark "For The Bold"

The Delhi High Court on June 3, has directed Parle Agro to file a written response within 30 days while fixing the next date of hearing on July 16, 2021. Watch this space for more updates.

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AKAI gets perpetual injunction against GOLDEN AKAI and SMART AKAI

M/S Phenomenon Agents Limited (Phenomenon) is a company registered in British Virgin Islands. It is the registered proprietor of trademark AKAI and has the sole right of managing the distribution and licensing of the said mark in relation to a wide range of quality home appliances, electronic gadgets, etc.

The earliest registration of its trademark AKAI dates back to the year 1964 in Japan. Phenomenon’s products were introduced in the Indian market in the 1990s. Trademark AKAI stands registered in India since November 1966 and stands renewed from time to time and is presently valid till 2025.

In April 2017, Phenomenon came across Ganga Devi's advertisement of an application for registration of the trademark SMART AKAI in respect of electric cooker, induction cooker, electric fan, LPG stove, coil stove, glass cooktops, geysers, water heaters, immersion heaters, roti maker, khakra maker, electric lanterns, solar lanterns, electric Thermo ware, grills, in class 11. It filed its opposition and the same is pending adjudication.

In April 2018, Phenomenon came across another advertisement of Ganga Devi's application for registration of the mark GOLDEN AKAI. It filed an opposition against GOLDEN AKAI too.

As per Phenomenon, Ganga Devi is responsible for the business operation of her two enterprises M/s Navaratan Industries and M/s Rajshree Udyog and she intends to pass off her product by infringing Phenomenon’s trademark AKAI and to derive unjust profits.

Hence Phenomenon approached1 the Bangalore District Court seeking a perpetual injunction, delivering up of products bearing the mark 'Smart Akai', 'Golden Akai' for destruction, rendition of accounts, and damages for infringement and passing off of Phenomenon's trademark 'AKAI'.

Phenomenon claimed that its mark AKAI has become a household name in India since 1990 and Ganga Devi’s act will cause intangible losses to it in terms of loss of confidence and trust of customers.

Ganga Devi appeared before the Court but failed to file the written statement.

The Court held that the fact that Ganga Devi filed applications seeking registration of the mark SMART AKAI and GOLDEN AKAI and the tax invoices of her two enterprises selling the products with the mark SMART AKAI are sufficient to accept Phenomenon’s claim that Ganga Devi is trying to pass off the goods using the above wordmark which is deceptively similar to Phenomenon’s Trademark "AKAI".

The Court stated that the use of the trademark AKAI in conjunction with any word, monogram, or logo as a trademark would certainly infringe Phenomenon’s trademark and therefore the Court granted a Perpetual Injunction restraining Ganga Devi and her two enterprises from using the impugned marks SMART AKAI and GOLDEN AKAI while selling their products so as to pass off as a product of Phenomenon.

Ganga Devi was also ordered to pay INR 100,000/- as damages to Phenomenon.

1 M/S Phenomenon Agents Limited vs Ganga Devi - Com.O.S.No.9485/2018- 24 May, 2021

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Bharat pe need not pay the price of its mark!

PhonePe is a mobile payment platform for transferring money using Unified Payment Interface (UPI). It works on the UPI system and all one needs is to feed bank account details and create a UPI ID.

PhonePe filed a suit at the Delhi High Court against Ezy Services which owns the brand “Bharatpe”, stating that the use of the suffix “pe” by Bharatpe is infringement of PhonePe’s trademark. It stated that the consumers would immediately associate the name BharatPe with the word PhonePe because of the use of a common suffix “Pe” and thereby cause confusion as to the source of the services rendered by BharatPe.

PhonePe contended that the word “Pe” was a dominant and distinguishing part of its registered trademark. PhonePe further contended that “Pe” was an invented word and does not form a part of the English dictionary.

The Delhi High Court in its ruling laid down that the trademarks registered cannot be broken down into its constituting words, which means that “PhonePe” has to be considered as a homogenous term and cannot be dissected into its constituting words “Phone” and “Pe”. The Court further observed that registration of a whole mark does not grant any exclusive rights over any one particular part of that registered trademark. The Court further observed that, ‘Pe’ is merely a unique form of representing the word ‘Pay’ which is descriptive of the services provided under both the marks. The Court held that, the mark ‘PhonePe’ as a whole is distinctive but not when dissected. In view of the above observations, the Court held that BharatPe is not liable for infringement of PhonePe’s trademark merely because of its use of the suffix “Pe”.

PhonePe then filed an appeal against this decision before the Division bench, however, as of June 4, 2021, PhonePe has withdrawn the appeal petition filed and instead the Single Judge Bench has been directed to expeditiously dispose the suit.

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Who owns the K in KSRTC? Karnataka or Kerala

For decades, both Kerala and Karnataka have been using the abbreviation KSRTC for their respective State Road Transport Corporations (SRTC). The two SRTCs have been operating their transport vehicles through each other’s states for decades. They have also been using the same parking spaces and booking offices. There was a lot of confusion observed amongst passengers as to which state was indicated by ‘KSRTC’.

Kerala State Road Transport Corporation (previously known as Travancore State Transport Department) is amongst India's oldest state-operated public road transport services dating back to 1938. In 1965, it was re-established as Kerala State Road Transport Corporation.

Source- https://app.kiwi/apk/com.ksrtcticketbooking/KSRTC-Kerala-SRTC-Bus-Ticket-Booking

We do not claim any copyright in the image used. It has been used for academic and representational purposes

Karnataka State Road Transport Corporation, started in the year 1948, was previously known as Mysore Government Road Transport Department. It was renamed Karnataka Transport Corporation in 1973.

Source- www.ksrtc.in

We do not claim any copyright in the image used. It has been used for academic and representational purposes

The two states using the mark ‘KSRTC’ were amicably co-existing until around 7 years back, when Karnataka SRTC secured the registration of the trademark ‘KSRTC’ along with a label representing a Gandaberunda (two-headed mythical bird) in the year 2014. Since Kerala was also using the abbreviation KSRTC, the Karnataka SRTC sent a legal notice to the Kerala SRTC asking it to cease using their acronym ‘KSRTC’.

In response to the notice, Kerala also applied for the registration of its KSRTC mark along with the logo depicting two elephants and the name ‘Ana Vandi’. However, the TM Registrar pointed out that the abbreviation ‘KSRTC’ already stands registered in the name of the Karnataka SRTC.

However, as per news reports, in the first week of June, 2021 after a 7 year battle, Kerala has finally succeeded in getting their mark ‘KSRTC’/ registered relying upon the “first user” rule.

Kerala proved its use of the mark from the year 1965 by furnishing photographs of its old buses, bus depots, pages from memoirs of former Transport Ministers, write-ups, and reports. Interestingly, there was a visual submitted from a Malayalam film of 1969, Kannur Deluxe, showing a Kerala SRTC bus plying between Kannur and Thiruvananthapuram. Since Karnataka’s use of the mark was from a later date, i.e. from 1973, it becomes a subsequent user.

With this, the Kerala SRTC has become the sole custodian of KSRTC with the logo:

A Senior Officer from the Karnataka SRTC has stated that Karnataka SRTC has not received any official communication and it will respond only after receiving the copy of the order.

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Hidden Meanings In Trademarks

*We claim no rights in the mark. It is being used for representational/educational purposes only

Haven’t we all spotted this logo every now and then at parties? Always wondered why a ‘Bat’ on an alcohol bottle and then eventually ignored and partied anyway. Well let’s solve the mystery together. A piece of information you’ll need: Rum is made from sugarcane. Now read on.

The Bacardi logo representing a bat came into being in the 1860’s! The brand is named after its founder: Don Facundo Bacardi Masso who set up a small distillery at an old warehouse. This warehouse was filled with ‘fruit bats’ who were there because of the aroma of molasses (sugarcane). Unlike most persons, Mr. & Mrs. Bacardi Masso adopted the bats and let them thrive in the environment.

Well, this was only the beginning of the idea of adopting a ‘bat’ as a logo. As per Latin American culture a bat is considered to bring fortune and luck. Additionally, bats prey on insects which prey on sugarcane and therefore are naturally friends of the rum industry. Therefore, the founders decided to adopt the ‘bat logo’. Further, back then most of the population in Cuba was illiterate and they would refer to the Bacardi Rum as the ‘Rum of the Bat’.

Interesting isn’t it?

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Know the Real India

-Adv. Chinmay Pawar

The North- East India- Mlechchha Dynasty

The might of the Vermans of north east Indian kingdom of Kamarupa started to decline after 3 centuries of rule. This paved a way for many subdued kings, local chieftains and powerful generals to fill-in the power vacuum.

‘Mlechchha’ is a Sanskrit term which was used to refer to foreign or barbarous people in ancient India. However, there is no concrete evidence to show as to how this term was linked to a ruling dynasty of the kingdom of Kamarupa.

The Mlechchha Dynasty ruled approximately form 650 AD to 900 AD. They established their capital at Hadapeshvar in the present-day Tezpur district of the state of Assam.

According to some historians, the Mlechchha-s were aboriginals, however, to accord legitimacy to their rule and dynasty, their lineage from Narakasura, a mythical king, was constructed.

Salasthambha was the first ruler of this dynasty, though, the historical sources describing his rise to the power are not reliable. According to historical records, the dynasty had twenty-one rulers but the line is obscure and the names of a few intervening rulers are unknown.

The Mlechchha dynasty was succeeded by the Pala dynasty.

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Hidden Gems of India

-Adv. Chinmay Pawar

Chopta: Uttarakhand

The Himalayas offer some of the best unspoilt nature on the planet. Chopta, a small region of meadows and evergreen forests, is located at an approximate altitude of 2608 mts above sea level in the Garhwal Himalayas in the state of Uttarakhand. It is a part of Kedarnath wildlife sanctuary.

Chopta village is surrounded by forests of pine, deodar (cedar) and rhododendron. Its rich fauna includes rare species of birds and musk deer. Chopta has been declared as an important bird-watching site by various national and international conservation and biodiversity organisations.

Chopta is at the epicentre of ‘Panch Kedar’ – the five most sacred Lord Shiva temples in Uttarakhand. Kedarnath, Madmaheshwar, Rudranath, Kalpeshwar and Tungnath.

Location of Chopta (Source: Google maps)

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"IP Schemes and Incentives for Startups and SMEs"

Adv. Sachi Kapoor and Adv. Aboli Kherde of RK Dewan & Co. attended the webinar on "IP Schemes and Incentives for Startups and SMEs" organised by ASSOCHAM IPR Department. The webinar was in furtherance of ASSOCHAM’s endeavour to reach out and create awareness about the L2PRO IP e-learning platform created by Qualcomm and the National Law University Delhi (NLUD) in collaboration with the Cell for IPR Promotion and Management (CIPAM) of the Department for Promotion of Industry and Internal Trade (DPIIT), Government of India. The webinar was indeed very insightful as it apprised the participants about the different schemes initiated by the State Governments of facilitating start-ups to create business and economic outputs out of their innovative ideas. It also shows the governments’ efforts of heavily incentivizing innovation amongst youngsters.

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