It’s Déjà vu For Cipla: Patent Office Revokes Another Granted Patent

Written By: Rosalin Dhal

Historic Recurrence is a Natural Phenomenon. When Supreme Court cancelled Novartis’ Patent on Glivec, it was clearly a tragedy for the latter and was expected to create a farse for the other branded drug-makers. But no one would have thought that a small hail-ball will groom into a full-fledged snowball so quickly. A patent granted to the German pharmaceutical company “Boehringer Ingelheim” on Spiriva, an asthma drug by the Controller General of Patent, Design and Trademarks has been revoked on an opposition filed by Cipla, the old player of “generic” arena. The Indian patent office on the application by Cipla, revoked the granted patent on the ground that it failed to demonstrate therapeutic efficacy and is not an invention as per section 3(d) of the Indian patent Act 1970.

Indian patent law prohibits grant of patent to new forms of known substance, unless the new form results in enhanced efficacy of that known substance. The efficacy is therapeutic efficacy that can be proved with the help of conducting clinical trials. Under the brand Spiriva, BI (Boehringer Ingelheim) sells the crystalline salt form of tiotropium bromide monohydrate, which is effective for treatment of pulmonary diseases.

Two years ago, the outcome of the Novartis case had determined the position of patenting new forms of known drugs in India. Novartis appeal petition on patent application of the beta crystalline form of imatinib mesylate, was rejected by the Supreme Court. The court had then contended that section 3(d) of the patent act is a safeguard introduced by the parliament in 2005 to prevent Evergreening. Evergreening is a practice adopted by pharmaceutical companies to extend their monopolies over a drug by patenting new forms of existing substance.

Cipla, India’s fourth largest drug maker who opposed the patent Spiriva has been marketing tiotropium bromide monohydrate under the brand Tiova since year 2003. Cipla must have breathe a sigh of relief on the revocation of BI’s Spiriva patent as it paved way for it to continue selling its brand in the Indian market. The contention of BI that the crystalline salt of tiotropium bromide monohydrate is more stable was questioned by Cipla on the ground that it didn’t demonstrate any significant change in the therapeutic efficacy to which the Patent Office has agreed. Apart from Novartis, this January, even Abbot found itself in a fix when its drug Humira was revoked by the Patent Office after Glenmark objected to the patent Grant before the Delhi High Court. To further substantiate the observation made with respect to this trend, our readers must be familiar with Cipla’s request for revocation of five patents owned by Novartis and the grant of compulsory license to Natco, ordered against Bayer Pharma.

This trend sets a clear message to the world that the US’s axiom of “anything under the sun can be patented” is not acceptable in India. Most importantly, even grant of a patent doesn’t guarantees that the protection will remain unhindered throughout the next twenty years. But what is important is to make sure that in a bid to prevent “evergreening” of Patents, the government doesn’t ends up setting the threshold so high that it starts acting as a deterrence to the major drugmakers from selling drugs in India. A balance has to be struck between the needs of the people vis-a-vis the market interests of branded drugmakers to allay the concerns raised by such decisions.

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Woodland Receives a 'Woody' Cane From Consumer Forum

The recent judgment delivered by the Delhi State Consumer Forum against woodland is an eye opener for entities operating in single brand retail. In a short judgment, the forum reprimanded woodland by imposing a fine of INR One lakh for selling goods of a brand other than its own without giving consumers any intimation about the same. The observation with respect to unfair competition was in addition to the court’s assessment of the situation. As per the facts of the case, the defendant refused to collect goods back from the complainant after they were found faulty, which compelled latter to knock Consumer forum’s doors. However, the whole scenario surfaced only when the customer observed that not only the goods were faulty, they also didn’t belong to the brand woodland, which lead the court to opine that woodland has also resorted to unfair trade practice.

Unfair trade Practices is a wide term that is used to denote numerous activities that run contrary to the fair trade norms and thus effect the consumers in a negative manner. Both the Competition Act 2002 and the Consumer Protection Act 1986 are concerned with consumer interest. The basic difference in both these Acts lies in the kind of protection accorded to the consumer, which can be inferred from the definition of consumer under the two legislation. Definition of consumer under Competition Act is quite wide and includes a person who buys goods and services for commercial use also. But consumer's definition under consumer protection law is limited to person who buys goods and services only for personal use. But when the relief sought is concerned with the market as a whole, only Competition Commission of India (CCI) has the power to decide. While the CCI aims at both competition and consumer interest, the consumer forum is only concerned with individual consumer interest.

India follows a very strict FDI policy for both single and multi-brand retail. After the recent political fuss about UPA government’s decision to increase FDI limit in muti-brand retail and its vehement opposition by the current government (then in opposition), the desired change seems pretty unlikely for now. Though India has cleared the road for foreign brands by allowing 100% FDI in single brand retail four year ago, it has deliberately created some potholes to ensure that MNCs don’t surpass their Indian counterparts that easily. One of the conditions as per the press note obligates MNCs to sell only single brand goods, which means that they cannot sell any other good even if it is manufactured by them only. The current case is a fine example of the said policy wherein the defendant Woodland was selling its own good under the brand ‘Woods’ without procuring necessary permission from the government, thus subverting the interest of other competitors.

Albeit, the current NDA government has given some indications about easing the norms for foreign entities to do business in India, it is still unclear as to what extent it will divert from its own election manifesto wherein it had accredited its stance on FDI policy to be one of its major reasons behind its poll victory.

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And This Time santabanta.com is Not Joking!

Written By: Avasi Mohanty

Bollywood is widely known to be the breeding ground for Masala. Most of this “Masala” is not only limited to gossip, disputes and patch-ups, but also to several legal snags that keep hopping up due to some reason or the other. Intellectual property squabbles nevertheless are the most popular ones.

Filmmakers and producers are often accused of trademark and copyright infringements which easily acquire center-stage because of the sheer media attention they get. In yet another major instance of trademark violation, popular humor and Bollywood website Santabanta.com has filed an infringement suit in the Delhi High court against Cinetek Telefilms Pvt. Ltd. and Viacom18 media’s movie “Santabanta Pvt. Ltd.” which will feature Boman Irani and Vir Das in lead roles. As per the news reports, petitioner has sought court’s decree for permanent injunction against the release of the movie and is also claiming damages along with movie credits for the infringement. The court, however, has not granted an injunction so far. The director of Cinetek Telefilms on the other hands, claims to have made the movie under a valid license from Motion Pictures Pvt. Ltd and it remains to be seen if latter has a better right over the usage of the mark as compared to the plaintiff. As per the recent order released on 27/02/2015, there is a possibility that the matter will be resolved between the parties through mediation.

This is not the first time Bollywood has witnessed a case of violation of trademark rights. Of late, a controversy cropped up when the makers of zandu balm sued producer Arbaaz Khan, for allegedly using their product mark in a popular song of his movie Dabbang. Another popular issue was the “hamara bajaj” case, a hushed up matter where Bajaj auto ltd. filed a suit against J.A.Entertainment Pvt. Ltd, owned by John Abraham for the infringement of their trademark hamara bajaj. The Bombay high court granted a permanent injunction against the defendant and restrained them from using the tagline in the proposed film.

It won’t be hard to conclude that title of a film cannot be a subject matter of trademark if one ponders on the wordings enunciating the essentials of a valid trademark. This is because a trademark distinguishes goods and services of one proprietor from the other and unless this ‘association’ is absent, a ‘mark’ can never qualify for protection as a ‘trademark’. Nevertheless, after decisions from courts based in US and the imitation of their rationales by courts in other common law countries (including India), it is indeed possible to register a movie’s title as trademark. However, the crux of the concept is that it’s comparatively easier to procure registration over titles for series of movie as compared to a single movie because of the differing level of distinctiveness. In case of single movie titles, secondary meaning has to be established to cross the minimum threshold for distinctiveness.

Trademark infringement issues for unauthorized usage of trademarks by movie produces and song makers is bound to create a fuss. With the surge in level of obsession with movies witnessed across the world, copyright and trademark issues are bound to grab the lime-lights. In one the recent blogs only, we had written about a serious copyright claim filed against the directors and producers of movie PK. Amitabh Bachachan’s controversial movie Nishabdh was a subject matter of court litigation in year 2007. Outside India also, a few years back, Disney also filed a trademark infringement suit for unauthorized use of its movie title FROZEN by the alleged infringer. Similarly, release of a movie titled ‘Age of Hobbits’ was successfully stopped by Warner Bros. for being similar to its ‘Hobbit’ series.

Albeit it remains to be seen how Indian Law evolves further on this point, movie producers and common proprietors are leaving no stone unturned to protect their intangible assets. The market implications of such matters can create a big dent in the pockets of both MNCs and filmmakers. Rampant copyright and trademark violations in the recent decade has revealed the high level of plagiarism in the film-making industry. While it was pretty premature to forbid such attempts on the basis of undeveloped or half bred Laws earlier, court decisions and out of court settlements have made it clear that IP issues cannot be taken lightly.

The fuzzy line between creativity inspired by a work and a banal trait copied from the right of others is not that blob any longer. An equilibrium is thus need of the hour where there is a perfect balance between creativity and inspiration, so as to ensure innovation and competitiveness in all sectors of film-making.

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