In a common (joint) appeal against the two Orders of the High Court of Delhi refusing AstraZeneca’s interim injunction applications against 9 Defendants in different lawsuits [AstraZeneca AB and Ors. v. Intas Pharmaceuticals Ltd. and Ors., FAO(OS) (COMM) – 139/2020, and 8 others], the division bench of the High Court of Delhi [Rajiv Sahai Endlaw, J. and Amit Bansal, J.], vide its Order dated July 20, 2021, dismissed the appeals while refusing the interim injunctions in all 9 matters and granted costs of Rs. 5,00,000/ against Plaintiff/Appellant in each suit. The Court held that one invention can be protected by only one patent.

Appellant’s patent IN 147, a genus patent, claiming a Markush structure, along with a disclosure of eighty examples. Dapagliflozin (DAPA), a compound used in anti-diabetic drugs, while covered under the Markush structure, was not specifically disclosed in the examples of IN 147. The term of IN 147 expired on October 2, 2020. Appellant’s patent IN 625, a species patent, which specifically claimed DAPA, is valid till May 15, 2023. In some of the suits, which were filed before October 2, AstraZeneca relied upon both the patents to allege infringement.

As per Section 10(5) of the Patents Act, 1970, “The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept…”. The underlying question, in this case, is whether there could be two patents with respect to the same invention.

Appellant contended that IN 147 bearing the Markush structure covered DAPA but did not disclose it and that DAPA was only explicitly claimed as a separate invention in IN 625. Hence, the Respondents could not manufacture it until its expiry, which is May 15, 2023. The Appellant asserted that merely because a particular compound falls within the scope of a particular claim, it does not amount to the said compound being disclosed with specificity. The Respondents argued that since it was the Appellant’s case that manufacture and sale of DAPA was infringement of IN 147, the Appellant was deemed to have admitted that DAPA was fully and particularly described in IN 147. Moreover, IN 625 was vulnerable to challenge, as it lacked inventive step, based on what was published and publicly known from IN 147.

While dismissing the Appeal, the Court opined that “with respect to one invention, there can be only one patent. The appellants/plaintiffs herein, however, while claiming one invention only i.e. DAPA, are claiming two patents with respect thereto, with infringement of both, by the respondent(s)/defendant(s). The same alone, in our view, strikes at the very root of the claim of the appellants/plaintiffs and disentitles the appellants/plaintiffs from any interim relief.” Further, the division bench acknowledged that a single formulation, such as DAPA, cannot be protected under two separate patents with distinct validity periods.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Sony Corporation vs K. Selvamurthy [Com. O.S. No. 8464/2018], a single judge [Lathakumari M., J.] of the City Civil & Sessions Court at Bengaluru vide an order dated June 18, 2021, summarily dismissing a suit for permanent injunction, held that even a well-known registered trademark cannot inherently claim an absolute monopoly over the entire class of goods or services of its registration, implying that even within the same class, certain services and the manner of use in respect thereof may be so different that even an identical mark’s use may not unfairly benefit from or hurt the well-known mark. . 

Section 29(4), states: “A registered trademark is infringed by a person who…uses in the course of trade, a mark which— (a)is identical… to the registered trademark; and (b)is used in relation to… services which are not similar to those for which the trade mark is registered; and (c)the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.” The question arises whether the use of an identical mark even for dissimilar services within the same class as that of the well-known trademark automatically amounts to taking ‘unfair advantage’ or being ‘detrimental to’ the latter’s distinctive character or repute? Or is it that the ‘unfair advantage’ or ‘detrimental to’ requirement cannot be presumed even in such a context and might in fact be lacking if the the services coupled with manner of use, that is to say the businesses, are sufficiently different. 

The plaintiff asserted the use of its well-known trademark “SONY”, registered under Class 39 covering transport, packaging and storage of goods, travel arrangement etc., by the defendant in its trade name and trading style “M/s SONY TOURS AND TRAVELS”, relating to its transport and car rental business, constituted infringement. 

The defendant contended that operating an entirely different local business under its trade name neither takes unfair advantage nor causes detriment. 

The Court pointed out that “the nature and style of the business of the plaintiff and defendant are altogether different.” Noting the description of plaintiff’s business under Class 39 “…are nothing but service details associated with manufacture of goods.”, the Court stated “…impossible to imagine that an ordinary man would link the electronic goods of the plaintiff to the travel business of the defendant”. Hence, “the plaintiff corporation failed to establish that the defendant has adopted the trade mark to take unfair advantage…”.

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In the matter of Nishi Gupta vs. Cattle Remedies, [W.P. (C) 13710/2018 & CM Appl. 53530/2018], a single judge [J.R. Midha, J.] of the High Court of Delhi vide judgment dated June 04, 2021, dismissing the writ petition challenging an order by the IPAB (Intellectual Property Appellate Board), has effectively held that the writ petitioner’s unawareness about an earlier registered mark is an unacceptable defense against the removal of impugned trademark for deceptive similarity with the earlier registered mark.

Section 11 of the Trademark Act, 1999 (the Act), states that “a trademark shall not be registered if, because of …its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the trademark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.” The question that arises is whether having no actual knowledge about the earlier registered mark negates ‘similarity’ and thus constitutes a defense to the applicability of Section 11 to the impugned mark? Or is the test of similarity an absolute one, independent of knowledge, awareness and cognizance? 

In the instant case, the petitioner brought a writ petition challenging the order passed by the Intellectual Property Appellate Board (IPAB) through which the petitioner’s trademark was removed as per section 57 of the Act, from Register of Trademark as it was found to be violative of section 11 of the Act. The petitioner is the owner of the trademark UTROTON which was registered in 2010 under class 31, whereas the respondent is the owner of the trademark UTEROTONE, which was conceived and adopted for veterinary preparations in 1968 and was registered in 1991 under class 5.

The petitioner contended that she had no knowledge of the respondent’s trademark and her trademark and the respondent trademark are different and used for different purposes. The respondents submitted that both the product and their usage are similar and they contain many common ingredients. Moreover, the stark similarity reflects that the petitioner was well aware of the respondent’s mark and is making false claims through the petition.

The Court, upholding the IPAB order, finding that the mere dropping of an alphabet was mala-fide and made no difference to the visual, structural, and phonetic similarity between the two, held that since the Register is open to public inspection and public search, an applicant is deemed to be aware or have constructive notice of its prior entries. It observed: “…if the trademark having an element of prior continuance and use, has been copied, no amount of explanation, even if it is plausible, is capable of defending infringement of trademark of such prior user.” 

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In the matter of Machani Infra Development Corporation Private Limited v. K. Anand, Case No. D2021-1352, the Sole Panelist [Assen Alexiev] of an Administrative Panel at the WIPO Arbitration and Mediation Center in a decision dated June 18, 2021, ruling in favour of the respondent, denied the complaint seeking transfer of the disputed domain name registration on the basis of complainant’s trademark rights in the domain name.

According to the Uniform Domain Name Dispute Resolution Policy (UDRP), demonstration of legitimate interests is an essential element to be proven in an administrative proceeding. Paragraph 4(c) of the Policy states the circumstances in which rights and legitimate interests are demonstrated by the respondent based on evidence, within which one of the said circumstances has been mentioned as follows: “or (ii) you (an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.” The question that arises is whether a mere surname/family name can satisfy the requirement to have been ‘commonly known by’? Or whether use of first name, possibly in conjunction with surname, is necessary to prove the existence of legitimate interest in the domain name? Is the first name a compulsory component of a domain name for it to have been ‘commonly known by’? 

In the administrative proceeding, the complainant contended that it has unregistered trademark rights in “MACHANI”, which is their house mark and brand identity and enjoys enormous reputation and goodwill. As per the complainant, the disputed domain name is identical to its trademark and the respondent has no rights or legitimate interests in it. The respondent contended that his rights and legitimate interests in the domain name stem from his surname “Machani”, which is a common surname.

The Panel, in addition to holding on the basis of the evidence that the term over which the unregistered trademark rights was claimed, is a common first or family name and thereby not inherently distinctive, found that the respondent had legitimate interests in the domain name by virtue of the fact that the term “Machani” reflected in the said domain name alluded to his family name.

The Panel, whilst discerning the element of rights and legitimate interests in the decision, interpreted the Paragraph 4(c) (ii) of the UDR Policy such that “A respondent can be found to be commonly known by a domain name under the Policy Paragraph 4(c) (ii) where it reflects his personal name, and the Respondent has submitted evidence that this is so.”

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In the matter of Deepa Jayakumar v. AL Vijay and Ors. [O.S.A.No.75 of 2020], a Division Bench [R. Subbiah and S.K.S Kurup, JJ.] of the Madras High Court, by judgement dated April 16, 2021, dismissing an appeal filed by the plaintiff-legal heir of deceased person against denial of an interim injunction under O.XXXIX R1&2 of the CPC pending trial of the suit, has effectively held that the right to privacy extinguishes with the life of a person and cannot be inherited or enforced posthumously.

Article 21 of the Constitution states that “No person shall be deprived of his life or personal liberty except according to procedure established by law.” The statutory interpretational issue in this case can be seen to be whether the right to privacy, recognized as part of right to life and liberty, is guaranteed even posthumously, inuring to the benefit of the legal heirs/estate of a deceased ‘person’ or whether it is available only to the ‘person’ during the lifetime of that ‘person’. Does ‘person’ in Article 21 refer only to a living ‘person’ or also to a deceased ‘person’? 

The plaintiff, Dr. Jayalalitha’s niece, seeks in her suit to restrain the film producers – defendants from making and releasing a film, web series, etc. on the life of Dr. Jayalalitha, the former Chief Minister of Tamil Nadu.

The plaintiff contends that Dr. Jayalalitha’s life cannot be captured without mentioning her and her family, apprehending the film would sensationalize her aunt’s life for commercial gain and posthumously violate her privacy. She also pointed to the Court several instances from the already released web-series that were allegedly scandalous and damaging to her aunt’s dignity and legacy.

The defendants submit that their biographical film is based on information available in the public domain, and that they have purchased the rights to the book ‘Thalaivi’. As regards the web series, it is submitted that it was an authorized dramatization of an already published book – “The Queen”. Plaintiff’s locus to assert posthumous privacy rights on behalf of her late aunt is disputed on the ground that privacy rights do not subsist after a person’s death.

The Appellate Court, while confirming the Trial Court’s prima facie view against the plaintiff pending trial and the consequent declining of an interim injunction, observed that “…privacy…earned by a person during his or her lifetime, extinguishes with his or her death…the reputation earned cannot be inherited like…property by…legal heirs… Therefore, we are of the opinion that “posthumous right” is not an “alienable right”…”.

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