LETTER FROM INDIA
AT A GLANCE
||A New IPR: The Protection of
Plant Varieties and Farmers' Rights Act, 2001.
||Madrid Beckons: India's proposed
||The Novartis case and the controversial
S. 3(d) of the Patents Act, 1970.
||Filing Notice of Opposition:
Extension of time.
||Filing evidence in opposition
proceedings: Extension of time.
||Long Overdue: punitive and
exemplary damages at last.
||'Hallmark': a well-known mark.
"The empires of the future are the empires of the mind" -
We doubt very much that Churchill
was thinking of trade marks, patents and copyright when he made that statement.
But in today's time, where imagination and innovation have become key to the
creation of wealth, and the intangible assets of companies have begun to far
exceed the value of their physical assets, the quote is a perfect fit for Intellectual
Of course, the origins of our firm go even further
back than Churchill and thanks in part to the foresight of our predecessors,
we have been at the vanguard of IP practice in India for a hundred and eighty
years now. Our report on the most recent developments in the field follows.
A NEW IPR: THE PROTECTION OF
PLANT VARIETIES AND FARMERS' RIGHTS ACT, 2001.
After India ratified the TRIPS Agreement, it was obliged, inter alia, to provide
protection for plant varieties by patents or by way of a sui generis system.
India exercised the latter option and consequently, enacted the 'The Protection
of Plant Varieties and Farmers' Rights Act, 2001' (hereafter referred
to as 'the PV Act') in October of 2001. The PV Act seeks to provide an effective
system for protection of plant varieties, the rights of farmers and plant breeders
and to encourage the development of new varieties of plants.
By a notification of the Central Government, the provisions of the PV Act came
into force with effect from October 19, 2006 and the PV Act was launched on
February 20, 2007. In the first phase, beginning May 20, 2007, applications
will be accepted for the registration of plant varieties covering twelve plant
The salient features of the PV Act are:
||Applications may be filed for
registration of any plant variety, which is an extant variety or
a farmers' variety of such genera and species as may be notified
by the Indian government
||Presently, 12 crops have been
notified for the first phase of registration and these are: Bread wheat
- Triticum aestivum L., Blackgram - Vigna mungo L. Hepper, Chickpea - Cicer
arietinum L., Green gram - Vigna radiata L. Wilczek, Kidney bean - Phaseolus
vulgaris L., Lentil - Lens culinaris Medik., Maize - Zea mays L., Pea -
Pisum sativum L., Pigeon pea - Cajanus cajan (L.) Millsp.; Pearl millet
- Pennisetum glaucum L., Rice - Oryza sativa L., Sorghum - Sorghum bicolor(L.)
||2. Applications may be filed,
inter alia, by any person or any farmer or community of farmers or any university
or publicly funded agricultural institution claiming to be the breeder of
the variety or an assignee thereof.
||The criteria for registration
of a new variety are novelty, distinctiveness, uniformity and stability
and for an extant variety they are merely distinctiveness, uniformity and
Further in case of registration of a transgenic
variety, a copy of the Genetic Engineering Approval Committee's (GEAC)
clearances for cultivation and seed production in India is to be attached.
||The Distinctiveness, Uniformity
and Stability (DUS) Test: If after initial scrutiny the application
is found to be in order the DUS test shall be conducted. The testing shall
be field and multi-location based (at least two locations) for at least
two crop seasons and special tests shall be laboratory based.
||Advertisement: Upon acceptance
of an application, the specification along with the photographs or drawings
of the variety in question shall be advertised for opposition.
|| Term of Protection:
The certificate of registration issued shall be for 9 years in case of trees
and vines and 6 years in case of other crops. Registration may be renewed,
subject to the condition that the total period of validity shall not exceed:
||in the case of trees and
vines, 18 years from the date of registration of the variety;
||in the case of extant variety,
15 years from the date of notification of that variety by the Central
Government under Section 5 of the Seeds Act, 1966; and
|| in other cases, 15 years
from the date of registration of the variety.
|| Registration would confer an
exclusive right on the breeder or his successor, his agent or licensee,
to produce, sell, market, distribute, import or export the variety.
||Exclusion of certain varieties
- registration will not be granted in cases where prevention of commercial
exploitation of a variety is necessary to 'protect public order or public
morality or human, animal and plant life and health or to avoid serious
prejudice to environment'.
Further, registration of a plant variety will not be allowed if it involves
any technology such as 'genetic use restriction technology' and 'terminator
technology', which is injurious to the life or health of human beings,
animals or plants.
|| The PV Act also provides for
the right of priority for a period of 12 months to citizens of convention
countries, contains compulsory licensing provisions, allows revocation
of breeder's right and lays out the nature of relief available
in suits for infringement.
Thus, parallel with international
developments, India is now in position to enforce a new class of IPRs, which
bear particular significance for its rural populace, as they are meant to improve
agricultural yields and outputs. However, the proof of a pudding lies in its
eating and the true impact of the PV Act shall only come out upon its implementation.
MADRID BECKONS: INDIA'S PROPOSED
While on the topic of international
trends, another piece of news caught our eye a while ago. The Union Cabinet
on February 8, 2007, gave its approval for India's accession to the Madrid
Protocol concerning the International Registration of Marks and agreed to
introduce a Bill in Parliament (no date has been indicated as yet). It also
approved amending the Trade Marks Act 1999. At last count, 80 countries were
members of the Madrid Agreement/Protocol.
THE NOVARTIS CASE AND THE CONTROVERSIAL
S. 3(d) OF THE PATENTS ACT, 1970
Our previous issue was a special
edition which analysed 'The TRIPS Agreement and recent changes in Patent Law
affecting the Pharmaceutical Industry'. One of the discussions therein was on
the controversial amendments made to Section 3(d) of the Patents Act, 1970,
in that, apart from the three universal conditions of patentability (novelty,
inventive step and industrial application), it also prescribed an additional
criterion for patentability of a new form of a known substance - that of proof
of enhanced efficacy. Significantly, the criterion of 'enhanced efficacy' is
not defined in the statute and more importantly, does not find mention in the
As a consequence of the aforesaid amendment made
to Section 3(d), on January 25, 2006, the Assistant Controller of Patents and
Designs in pre-grant opposition proceedings filed by five generic companies
and one NGO, Cancer Patient Aid Association, against Novartis, rejected its
patent application for the beta crystalline form of imatinib mesylate 'GLIVEC',
stating, inter alia, that the criterion of 'enhanced efficacy' had not been
met. Interestingly, when 'GLIVEC' was examined previously vis-à-vis Section
3(d) as it then stood, it had cleared the bar for patentability and was granted
an Exclusive Marketing Right.
Accordingly, Novartis approached the Chennai High
Court by filing appeals against the order of the Assistant Controller and also
writ petitions for a declaration that Section 3(d) of the Patents Act, 1970
as substituted by the Patents (Amendment) Act, 2005 (15 of 2005) was non-compliant
with the TRIPS Agreement or, in the alternative, for a declaration that it was
However, by a notification dated April 3, 2007,
it has been provided that as of April 2, 2007, all cases of appeals against
any order of the Controller pending before any High Court stand transferred
to the Intellectual Property Appellate Board ('IPAB') to which a technical member
has now been added. We have had the privilege to represent Novartis in these
The provisions of the Trade Marks
Act, 1999 have not been devoid of controversy and two recent decisions have
done much to clarify matters.
FILING NOTICE OF OPPOSITION: EXTENSION OF TIME
In the land mark case of Sardar Gurdas Singh Bedi Vs. Union of India
[2006 (33) PTC 321 (Bom)], a writ petition was filed in the Bombay High Court
against the Registrar's refusal to accept a request for extension of time to file
a Notice of Opposition on the ground that the petitioner's request had been filed
late. As per Section 21(1) of the Trade Marks Act, 1999 and Rule 47(1) of the
Trade Marks Rules 2002, an opponent has a period of 3 months to file a Notice
of Opposition against a published application extendible by one month in the aggregate
by filing a request for extension. Rule 47(6) clarifies that the extension request
must be filed before expiry of the initial 3 month period.
FILING EVIDENCE IN OPPOSITION
PROCEEDINGS: EXTENSION OF TIME
In UCB (a Societe Anonyme organized under the laws of Belgium) Vs. Torrent
Pharmaceuticals Limited, the Respondent, i.e., Torrent Pharmaceuticals Limited,
filed an application for registration of the trade mark 'ZIRTIN'. UCB, i.e.,
the Appellant in this case filed a Notice of Opposition against the said trade
mark primarily on the ground that 'ZIRTIN' was deceptively similar to its registered
trade mark 'ZYRTEC'.
The Assistant Registrar, vide his letter of July
21, 2003, called upon the Appellants to file their Evidence in Support of Opposition
within two months from the date of receipt of the Counter Statement, i.e., by
September 21, 2003. Since collation of documents was taking time, the Appellants
took periodic extensions of time till December 21, 2003. The Assistant Registrar
allowed the extension requests till November 21, 2003, however, rejected the
Appellants extension request from November 21, 2003 to December 21, 2003. On
December 22, 2003, the Appellant filed the Evidence in Support of Opposition
alongwith an interlocutory petition with the Trade Marks Registry.
The interlocutory petition came up for hearing
wherein the Appellant contended that the Assistant Registrar, under discretionary
powers conferred upon him by Section 131 of the Trade Mark Act, 1999 ('the Act')
had the discretion to extend time for filing evidence. The Assistant Registrar,
however, held that there had been a default on part of the Appellant and passed
an order dismissing the interlocutory petition and treating the opposition as
The Appellant filed an appeal against this order
with the Intellectual Property Appellate Board (IPAB) and the Board confirmed
that on a combined reading of Sections 21 (…evidence…… may be submitted …within
the prescribed time…) and 131 (discretionary powers of the Registrar)
of the Act and Rules 50 (submission of evidence within two months of receipt
of the counter-statement or within such further period not exceeding one month
in the aggregate) and 105 (sub clause 2: grant of extension subject to
provisions of rules prescribing time limits) of the Trade Marks Rules, 2002
('the Rules'), it was clear that the Registrar has powers to extend time for
It is worth mentioning that a similar view was
taken by the High Court of Gujarat in Wyeth Holdings Corpn. & Anr.
Vs. Controller General of Patents, Designs and Trade Marks [2007
(34) PTC 1 (Guj)]. The Court noted that Rule 50(1) of the Rules did state
that Evidence in Support of Opposition had to be filed within two months of
the receipt of the Counter Statement extendible by one month and further, that
Rule 50(2) provided that if Rule 50(1) was not complied with, the opposition
shall be deemed abandoned. However, keeping in mind Section 131 of the Act,
which confers an unambiguous discretionary power on the Registrar and the principle
of 'harmonious construction (provisions in subordinate legislation - the Rules
- have to be in conformity with provisions of principal legislation - the Act)',
the Court declared sub-rule (2) of Rule 50 as 'directory' and not mandatory
and the Registrar could, thus, permit a further extension of time.
Though the Indian judiciary has, over time, established
an impressive track record of expanding the frontiers of trade marks jurisprudence,
an area not ventured into previously was that of imposing heavy punitive/exemplary
damages, which are founded on the philosophy of corrective justice. However, of
late, the judiciary has been steering just that course in cases of trade mark
LONG OVERDUE: PUNITIVE AND EXEMPLARY DAMAGES
In Time Incorporated vs. Lokesh
Srivastava & Anr. [2005 (30) PTC 3], the Delhi High Court observed
that the time had come when the Courts dealing with actions for infringement
of trade marks, copyrights, patents, etc. should not only grant compensatory
damages but award punitive damages with a view to discourage and dishearten
law breakers who indulge in violation with impunity out of lust for money, so
that they realize that in case they are caught, they would be liable not only
to reimburse the aggrieved party but would be liable to pay punitive damages
also, even if it may spell financial disaster for them. It was further observed
that the award of punitive damages serves the additional purpose of limiting
the Defendant's ability to profit from its fraud by escaping detection and prosecution.
If a tortfeasor is caught only half the time he commits torts, then when he
is caught, he should be punished twice as heavily in order to make up for the
times he gets away. The Court felt that this approach was also necessitated
for the reason that it is very difficult for a plaintiff to give proof of actual
damages suffered by him as infringers never maintain proper accounts of their
transactions since they know that the same are objectionable and unlawful. In
the instant case, the Court granted compensatory damages of Rs. 500,000 (USD
11,340) and punitive/exemplary damages of another Rs. 500,000 (USD 11,340).
Following the aforesaid principle, in Himalaya Drug Company Vs. Sumit
[2006 PTC 112 (Del)], the Delhi High Court held that the Plaintiff was entitled
to a decree of Rs. 794,227 (approximately USD 18,014) by way of compensatory
damages as well as a decree for the same amount on account of punitive/exemplary
Another interesting decision, this one on well-known
'HALLMARK': A WELL-KNOWN MARK
In Hallmark Cards, Inc. Vs. Hallmark Studio Pvt. Ltd. & Ors.,
the Plaintiff, identified throughout the world for products and services ranging
from greeting cards and gifts to stationery, flowers and television programmes,
was the proprietor of the trade mark/name HALLMARK. The registration for the
said trade mark in India went back to the year 1982 and on account of continual
use since then, its mark had acquired immense goodwill and reputation in India.
The Defendants were using the mark/name HALLMARK STUDIO to represent their business
of Studio and Equipment Hiring, Production and Distribution of Television
Programs, etc. The Plaintiff filed a law suit against the Defendants in
the High Court of Delhi praying for, inter alia, an injunction restraining
the Defendants from using the mark/name HALLMARK as their trade name.
The Court held that the Plaintiff's trade mark/
name HALLMARK had acquired goodwill and reputation in the market and had all
the characteristics of a well known mark and the Defendants' use of a mark identical
to that of the Plaintiff's would confuse the unwary purchaser. The Court granted
an injunction stating that if the Defendants were not restrained the Plaintiff
was bound to suffer irreparable loss in terms of money as well as in terms of
© Remfry & Sagar
India" is intended to provide our clients and associates with information of general
nature on legal issues and recent developments in the areas of intellectual property,
foreign investment and corporate laws. It should not be relied upon as legal advice or