AT A GLANCE

	A New IPR: The Protection of Plant Varieties and Farmers' Rights Act, 2001.
	Madrid Beckons: India's proposed accession.
	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.

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 Property.

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 species.


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.) Moench.
	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 stability. 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 ACCESSION

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 TRIPS Agreement.

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 unconstitutional.

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 proceedings.

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 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 abandoned.

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 filing evidence.

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.

LONG OVERDUE: PUNITIVE AND EXEMPLARY DAMAGES AT LAST

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 damages.

'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 its reputation.

Au revoir!