1. Bayer Corporation v. Union of India: In a very significant development, the Delhi High Court held that ‘export’ of a patented invention for experimental purposes is also covered under Section 107A of the Patents Act, 1970 (India’s Bolar exemption) and thus does not amount to patent infringement. It accordingly allowed Natco to export Bayer’s patented drug ‘Sorafenib Tosylate’ (for which it was granted a compulsory license in 2012) to China for the purpose of conducting development/ clinical studies and trials. However, two months later, the order was stayed by a Division Bench which asked Natco to file a separate application seeking permission for exporting the drug for experimental purposes and observed that it would be permitted to export only a limited quantity of the drug.
Del HC Allows Natco to Export Bayer’s Nexavar under the Bolar Exemption
2. Bayer Intellectual Property Gmbh v. Ajanta Pharma Ltd. & Ors.: In an interesting order, the Delhi High Court modified an ad-interim injunction granted against Ajanta, allowing it to manufacture, distribute, offer for sale or sell the impugned products (generic version of Bayer’s patented drug Vardenafil) for purposes of ‘exports’. It held that commercial exports of prima facie infringing products covered by a non-worked Indian patent did not merit injunctive relief on the ground that restraint of such exports would lead to “not only loss of employment but revenue to the State as well”, and would therefore be against ‘public interest’.
Bayer v. Ajanta: DHC Erects New Jurisprudence on Public Interest for Injunctions
3. Biocon Ltd. & Mylan Pharmaceuticals Pvt. Ltd. v. F. Hoffmann-La Roche AG & Ors. : In a very significant development, the Competition Commission of India ordered a detailed investigation against pharma major Roche with respect to the cancer drug, Trastuzumab on a positive prima facie determination that Roche had abused its dominance (in the market for biological drugs based on Trastuzumab, including its biosimilars) and thereby contravened Section 4(2)(c) of the Competition Act, 2002. It observed that the practices adopted by Roche Group to create an impression about the propriety of the approvals granted, the safety and efficacy of biosimilars, the risk associated and the outcome of the on-going court proceedings in the medical fraternity, including doctors, hospitals, tender authorities, institutes etc., when seen collectively, prima facie appeared to be aimed at adversely affecting the penetration of biosimilars in the market. Our three part post on this order, which can be viewed here, here and here.
SpicyIP Tidbit: CCI Orders Investigation Against Pharma Major Roche
4. Patel Field Marshal Agencies Ltd. v. PM Diesels Ltd. & Ors.: In a landmark decision, the Supreme Court conclusively settled an extremely important issue that whether, upon the institution of a suit for infringement under the Trademarks Act, the remedies for rectification of a trademark under Sections 47 and 57 (before the IPAB) are still available to the litigant, in case the plea of validity has been abandoned by the relevant litigant. The Supreme Court took note of the conflicting decisions of the various High Courts, and found that where the question of validity has not been taken up by the court, the statutory authority has the power to decide a rectification claim by the litigant. However, in a case where the court comes to a prima facie conclusion on validity, the only remedy available is an appeal.
(SpicyIP Duet) Aten, Hut! The SC Clarifies Law Regarding Rectification Proceedings
5. Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd.: In a notable development for Indian trademark law, the Supreme Court reiterated that IP rights are “territorial” and not “global”. The court refused to grant an injunction restraining the defendant from using its registered trademark ‘Prius’ even though Toyota was a prior user of the mark. It reasoned that even though Toyota’s mark was well-known outside India, Toyota failed to prove that it enjoyed a reputation in the ‘Indian’ market at the relevant point of time i.e. the year 2001 when the defendant began using the mark in India.
Breaking News: Toyota Loses Trademark Battle over Prius at Indian Supreme Court
6. Icon Health and Fitness, Inc. v. Sheriff Usman & Anr. : In an extremely impactful but horrendously reasoned judgment (which is why it didn’t make it to our second category of the top 10 judgments based on jurisprudential rigour and/or legal lucidity), the Delhi High Court held that the presence of the Defendant’s business on online portals such as Amazon or Google Play is sufficient to establish the court’s territorial jurisdiction over the defendant in a suit for passing off. This kind of broad and vague limitation on jurisdiction sets a dangerous precedent as it paves a clear way for unscrupulous litigants to engage in forum shopping, a practice where a plaintiff would approach a jurisdiction not because of any real connection to the dispute, but because of a greater likelihood of success.
7. Metro Tyres Ltd. v. The Advertising Standards Council of India & Anr.: In yet another notable judgment to emerge from the Delhi High Court, it was held that the Advertising Standards Council of India (ASCI) has jurisdiction to adjudicate upon claims of copyright and trademark infringement and passing off. The Court observed that the existence of provisions under the Copyright Act, 1957 and the Trademark Act, 1999 exclusively empowering the district court to adjudicate upon claims of infringement does not operate as an embargo to the ASCI adjudicating upon claims of infringement. The Court grounded its judgment in the desirability of vesting self-regulatory bodies with greater powers in order to enable them to function as efficacious alternative dispute resolution mechanisms.
8. M/s AZ Tech (India) & Anr. v. M/s Intex Technologies (India) Ltd.: In a decision that can have far reaching implications, Supreme Court called out the “disturbing trend” of settling IPR suits through interim orders. Coming down heavily on an interim order passed by the Delhi High Court, the Supreme Court observed that the said order had virtually dealt with the merits of the matter in their entirety, despite being an interim order. The Court went on to direct the Registrar General of the Delhi High Court to report to the Court about the following-the total number of pending IPR suits, divided into different categories, in the Delhi High Court, stage of each suit, and also the period for which injunction/interim orders held/holding the field in each of such suits.
SpicyIP Tidbit: SC Calls Out “Disturbing Trend” of Settling IPR Issues Through Interim Orders
9. Bright Enterprises Private Ltd. & Anr. v. MJ Bizcraft LLP & Anr.: In a decision befitting the description ‘landmark’, the Delhi High Court delivered the first ever decision on Summary Judgments provided under Order 13A of the Civil Procedure Code, 1908. A Division Bench of the Court, deciding the appeal filed against the impugned order of Single Judge, held that the court has to mandatorily issue summons to the Defendant even in a summary proceeding under Order 13A and the court does not have the discretion to derogate from this requirement unless the suit was hit by either Order 7 Rule 10 or Rule 11. The Court stressed that the an application for Summary Judgment can only be filed after the summons is served on the Defendant, and before the court frames issues in the suit. In conclusion, the Court notes that the conditions mentioned in Order 13A are to be very strictly followed, to avoid injustice to parties.
Delhi HC Passes Landmark First Order on Summary Judgement Proceedings Under Order 13A of the CPC
10. Monsanto Technology LLC & Ors. v. Nuziveedu Seeds Ltd. & Ors: In the ongoing tussle between the Indian seed companies and Monsanto, a single judge of the Delhi High Court ruled that Monsanto’s termination of the contract with the Indian seed companies was prima facie illegal and allowed Nuziveedu and the others to continue using the Bt. Technology licensed from Monsanto in the interim, provided that the trait fee is paid till the suit is finally disposed off.The Single Judge observed that Monsanto refused to even acknowledge the effect of the State government legislations or notifications on the cotton seed prices and only asserted its right to receive the trait fee as settled “through mutual consent” under the contract. Therefore, Monsanto was duty bound to consider the request of Nuziveedu and others for modification of the terms as to the rate of trait fee payable. Nevertheless, shortly thereafter, a Division Bench stayed the order of the Single Judge and rendered the contracts inoperable, bringing the parties back to status quo.
Delhi High Court Declines to Grant Monsanto an Interim Injunction in Dispute with Nuziveedu