VOL IX                                                      ISSUE NO. 07                                        April 03, 2017          

In This Issue

Delhi High Court: Interpretation of ‘export’ under S. 107A of Patents Act, 1970

In a recent decision dated March 8, 2017 in Bayer Corporation v. Union of India & ORS; and Bayer Intellectual Property GMBH & Anr v. Alembic Pharmaceuticals LTD.; Hon’ble Justice Rajiv Sahai Endlaw of Delhi High Court held that export of a patented invention for experimental purpose is also covered under S. 107 A of the Indian Patents Act and thus does not amount to patent infringement.

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India: British company's onslaught on the Government’s Make in India lion

Prime Minister Narendra Modi, in order to boost manufacturing in the country announced the ‘Make in India’ campaign on his very first Independence Day Speech. Since its launch the initiative instilled a certain sense of confidence on the Indian Ecosystem. However, on May 18, 2015, Lonsdale Sports Limited, a clothing brand based out of London, England filed notices of opposition against the trademark application by the ‘Make in India’ scheme

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Finance Bill, 2017: Copyright Board to be merged with IPAB

On March 22, 2017, Lok Sabha passed the Finance Bill, 2017 (hereinafter referred to as the “Bill”) wherein the Copyright Board is set to be merged with the Intellectual Property Appellate Board (hereinafter referred to as “IPAB”).

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India: S.S. Rana’s Fahimuddin part of the victorious Indian team at the 2nd T-20 Asia Cup Deaf Cricket Championship

Fahimuddin, an employee of S.S. Rana & Co., was part of the victorious Indian team at the 2nd T-20 Asia Cup Deaf Cricket Championship hosted by Bangladesh. Other than the hosts Sri Lanka, Nepal, India and Pakistan were the other sides, who competed for the championship.

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Delhi High Court: Interpretation of ‘export’ under S. 107A of Patents Act, 1970

 

In a recent decision dated March 8, 2017 in Bayer Corporation v. Union of India & ORS; W.P.(C) 1971/2014 and Bayer Intellectual Property GMBH & Anr v. Alembic Pharmaceuticals LTD.; CS(COMM) No.1592/2016, Hon’ble Justice Rajiv Sahai Endlaw of Delhi High Court held that export of a patented invention for experimental purpose is also covered under S. 107 A of the Indian Patents Act and thus does not amount to patent infringement.

 

Factual Background  

  • Bayer Corporation (Bayer) had filed a suit numbered CS(OS) No.1090/2011 for restraining Natco from making, importing, selling, offering for sale ‘SORAFENIB’, ‘SORAFENIB TOSYLATE’ or any generic version or any other drug or product thereof which is a subject matter of Bayer’s Patent No.215758.

  • Natco during the pendency of the suit approached the Patent Office for grant of Compulsory Licence against the said patent.On March 9, 2012, the Controller of Patents granted Compulsory Licence in Patent No. 215758 under Section 84 of the Patents Act to Natco. In accordance with the terms of the Compulsory Licence, it was solely for the purposes of making, using, offering to sell and selling the drug covered by the patent within the territory of India.Natco, however, manufactured the product covered by the Compulsory Licence for export outside India. A writ petition numbered W.P.(C) No.1971/2014 was filed seeking a mandamus to the Customs Authorities to seize the consignments for export containing products covered by Compulsory Licence including ‘SORAFENAT’ manufactured by Natco.

  • On March 26, 2014, notice of writ petition was issued therein and the Customs Authorities were directed to ensure that no consignment from India containing ‘SORAFENAT’ covered by Compulsory Licence was exported. However, Natco was given the liberty to apply to the Court for permission to export the drug. Subsequently, on May 23, 2014, Natco pointed out that in fact it has already been granted a drug license and it was permitted to export the drug SORAFENIB TOSYLATE‘ not exceeding 15 gm for development / clinical studies and trials.

  • Natco again applied for permission to export 1 Kg. of Active Pharmaceutical Ingredient (API) SORAFENIB to China for the purposes of conducting development / clinical studies and trials and the said application was contested by Bayer.

  • Natco filed a counter affidavit in the writ petition inter alia pleading that it never exported the finished product ‗SORAFENAT‘ to any party outside India for commercial purpose.

  • Bayer, in its rejoinder to the counter affidavit pleaded export of a product covered by Compulsory Licence under the garb of Section 107A of the Act is abuse of the process of law.

Issue before the Court

 

In the present case, the issue is whether the language of S.107A of the Patents Act, 1970 permits export from India of a patented invention, solely for development and submission of information or whether such act would constitute infringement under Patents Act, 1970.

 

Petitioner’s Submission

 

Bayer contended that-

  • S. 107A of the Patents Act has no application as the act of making, constructing, using, selling or importing a patented invention are to be performed within the territory of India.

  • S.107A of the Act does not contemplate export of product per se but is limited to information generated within the territory of India.

  • The word ‘selling’ in Section 107A of the Patents Act means ‘selling in India only’ and does not include export. Further, S. 107A uses the word ‘import’ and there is absence of the word ‘export’.The word ‘buying’ in S. 107A of the Act would have included the word ‘import’ also; however from the fact that besides using the word ‘buying’, the word ‘importing’ has also been used, it follows that buying did not include import. Similarly, selling will not include export. Reading the word ‘export’ in Section 107A would amount to making laws for other countries.

Therefore, export of a product covered by Compulsory Licence under the garb of Section 107A of the Act is an abuse of the process of the law.

 

Respondent’s Submission

 

Natco submitted that-

  • The export of the product covered by the Compulsory Licence is not intended for commercial purposes. Exports intended by Natco are only for research and development purposes and to obtain the drug regulatory approvals in the respective countries.

  • Section 48 of the Patents Act is subject to other provisions of the Act. S. 107A is not an exception to Section 48. Section 84 of the Patents Act dealing with the grant of Compulsory Licence is also an exception to Section 48.

  • The wide ambit of Section 107A is evident from the use of the words ‘reasonably related to the development and submission of information’.

  • Sections 107A, 48 and 84 have to be ready harmoniously with Sections 90 and 93 of the Patents Act to contend that grant of Compulsory Licence cannot be in negation to the rights under Section 107 A.

Court’s Observation

 

The Court opined that Section 107 A prescribes the acts which are not to be considered as infringement of patent rights but there is no provision in the Patents Act prescribing as to what acts constitute infringement of patent rights. Thus, exercise of any of the acts mentioned under S.48 by a non-patentee would be infringement of a patent.

 

‘Selling’ permitted by Section 107A is of a patented invention i.e. a ‘product’ and not of ‘information’. The word ‘information’ used in Section 107 A is in the context of information, required to be submitted to any authority under any law of India or of a country other than India regulating the manufacture and marketing of any product. S. 107A, as per its natural / literal / textual meaning requires selling of a patented invention solely for submission of information required under any law. There is nothing in the language of Section 107A to suggest that only the information generated/collected in India could be transported out of India and not the patented invention.

 

There is thus nothing in Section 107 A or elsewhere in the Patents Act to restrict the meaning of ‘selling’ in Section 107 A. In the absence of any law prohibiting export of a patented invention for purposes permitted under Section 107 A, no such prohibition can be inferred.

 

Held

 

Thus, The Court held that the grant of Compulsory Licence would not come in the way of Natco exercising its rights under Section 107 A as a non-patentee and cannot be deprived of making, constructing and selling by way of export a patented invention for purposes specified in Section 107A.

 

 

 

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India: British company's onslaught on the Government’s Make in India lion

 

Remember the very first Independence Day Speech of Prime Minister Narendra Modi? From the ramparts of the Red Fort he had famously announced,

 

“Let’s resolve to steer the country to one destination. We have it in us to move in that direction. Come, make in India", "Come, manufacture in India". Sell in any country of the world but manufacture here. We have got skill, talent, discipline, and determination to do something. We want to give the world a favorable opportunity that come here, "Come, Make in India" and we will say to the world, from electrical to electronics, "Come, Make in India", from automobiles to agro value addition "Come, Make in India", paper or plastic, "Come, Make in India", satellite or submarine "Come, Make in India". Our country is powerful. Come, I am giving you an invitation.”

 

And bang! Forty-one days later at Vigyan Bhawan, New Delhi, Modi announced the launch of India’s most ambitious plan to boost manufacturing in the country called, ‘Make in India’, in the presence of business stalwarts like Mukesh Ambani, Cyrus Mistry, Kumar Mangalam Birla and Azim Premji.

 

To give the initiative a truly symbolic touch, during the event a logo was also released, which is a derivation from India’s national emblem. The wheel denotes the peaceful progress and dynamism – a sign from India’s enlightened past, pointing the way to a vibrant future. The prowling lion stands for strength, courage, tenacity and wisdom – values that are every bit as Indian today as they have ever been.

 

 

Thereafter, the Department of Industrial Policy and Promotion (hereinafter referred to as the ‘DIPP’), the body responsible for the overseeing the day to day operations related to this initiative filed for a trademark application in Classes 9,16,18,25,28,35,38,41,42, which got advertised in the Trade Marks Journal dated January 19, 2015.

 

However, on May 18, 2015, Lonsdale Sports Limited, a boxing, mixed martial arts and clothing brand based out of London, England, filed notices of opposition against the ‘Make in India’ mark, in all the classes.

 

The grounds of opposition in the application are as follows –

  1. Lonsdale uses lion trademarks, collectively called “Lion Marks” on their products. They have two of their Lion Marks registered in India and applications for two Lion Marks have been advertised. They also have applications and registrations of the Lion Marks in other countries.

  2. The trademarks of Lonsdale have been used for many years and their products have been worn by renowned sports personalities and celebrities. Because of the historic adoption and popularity of the Lion Marks, they are exclusively associated with Lonsdale.

  3. The mark of the applicant is visually similar to the Lion Marks and would therefore, lead to confusion and deception among the public as the mark of the applicant cannot distinguish between their goods and the goods of Lonsdale.

  4. The public would assume from the mark of the applicant that Lonsdale has begun manufacturing new goods or has begun licensing/franchising to the applicant.

  5. The applicant has no honest or concurrent use to justify the registration of their mark.

  6. Applicant has falsely claimed proprietorship in their mark as they should have known about the Lion Marks which are very popular and widely used.

  7. The registration of the applicant’s marks would be infringement of Section 11 of the Trade Marks Act, 1999.

The two Marks in question are copied below:

 

 

On September 29, 2016, DIPP filed its counter statement before the Registrar of Trade Marks, New Delhi. Their grounds of defense stands as follows –

  1. The ‘Make in India’ logo was inspired by the rich religious and cultural heritage of India. The national emblem of India, the Ashok Lion Capital of Sarnath comprises of four lions and is mounted on an abacus which features the sculpture of a lion along with other animals. In ancient India, lion was used as a state symbol.

  2. The logo of the Reserve Bank of India has a lion.

  3. There are lots of postal stamps in India which feature a lion.

  4. The ‘Make in India’ logo is widely recognized as an initiative of the Government of India and is popular nationally and internationally amongst the public and business community.

  5. The logo has been publicized on every platform including in print and electronic media, social media, industry meets etc.

  6. The launch of ‘Make in India’ in September 2014 led to a 44% increase in FDI equity inflows.

  7. The ‘Make in India’ logo is distinctive of the applicant and its goods and services and the logo is not similar to the Lion marks. The ‘Make in India’ logo has a distinct portrayal of a forward marching lion which is made of gearwheels with ‘Make in India’ prominently written over it. This makes the trademark easily distinguishable from other marks including that of Lonsdale.

  8. The Government of India has an unequalled reputation and goodwill all over the world in the field of economy, trade and business. Therefore, there is no question of any bad faith involved on part of the applicant.

It will be interesting to note further developments in this regard, especially in light of the fact that since its launch the initiative has really instilled a certain sense of confidence in the Indian entrepreneurial ecosystem and has India as a potential manufacturing hub in the eyes of the world. Make in India so far has had over 170 global and Indian manufacturers committing investments worth a total of $90 billion.

 

For the general information of our readers, a list of some other "Lion" marks Registered in India are as under–

 

 

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Finance Bill, 2017: Copyright Board to be merged with IPAB

 

On March 22, 2017, Lok Sabha passed the Finance Bill, 2017 (hereinafter referred to as the “Bill”) wherein the Copyright Board is set to be merged with the Intellectual Property Appellate Board (hereinafter referred to as “IPAB”).

 

This Bill seeks to amend the Copyright Act, 1957, so as to transfer the functions of the Copyright Board to IPAB, which presently deals with matters relating to trademarks, patents and geographical indications only. This bill also proposes to amend the rules pertaining to qualifications, appointment and other terms of service of the members of IPAB. It introduces Section 89A to the Copyright Act which leaves these matters to be solely governed by Section 179 of the Finance Act, 2017, in respect of members appointed after the commencement of this Act. The Central Government can make rules in this regard.  

This Bill is presently pending for the Presidents assent to become a law. A copy of the said bill can be found over here.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

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INDIA: S.S. Rana’s Fahimuddin part of the victorious Indian team at the 2nd T-20 Asia Cup Deaf Cricket Championship

 

Fahimuddin, an employee of S.S. Rana & Co., was part of the victorious Indian team at the 2nd T-20 Asia Cup Deaf Cricket Championship hosted by Bangladesh. Other than the hosts Sri Lanka, Nepal, India and Pakistan were the other sides, who competed for the championship.

 

Fahim, the moniker he is usually referred to by close friends and colleagues has been a cricket enthusiast for much his life, and along with four other members of the team are mentored by the famous Sports Authority of India coach M.P. Singh.

 

Additionally, as recently as last year, he was part of the team which won the National T20 Cricket Championship held at the Gymkhana Ground, Secundrabad. The tournament was organized by the All India Sports Council of the Deaf in association with the Delhi Association of the Deaf and received participants from a lot of teams from different corners of the country.

 

We at S.S. Rana & Co., are committed to our Equal Opportunity Policy and to provide work environment free of discrimination based on religion, belief, or any other physical or sensory disability.

 

Mr. Fahimuddin has been working with the firm for almost 3 years now and has been part of the firm’s cricket team in various corporate cricket matches.

 

 

 

 

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