In This Issue

INDIA: Monsanto Served Notice for Revocation of its Bt Cotton Patent

The Department of Industrial Policy and Promotion (DIPP) has recently served a show cause notice to Mahyco Monsanto Biotech (India) Private Limited (MMBL) on March 03, 2016, calling upon it to explain why its patent for the Bt cotton technology should not be revoked under the provisions of the Indian Patents Act, 1970.

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Court's Permission not required for Rectification of Trademark during Pendency of a Suit

In a recent decision rendered by the Full Bench of the Delhi High Court in the case of Data Infosys & Ors. v. Infosys Technologies Ltd. [FAO (OS) 403/2012], the Hon’ble Court sought to provide some clarity and solve the judicial conflict on the question whether prior permission of the Court is necessary under Section 124(1)(b)(ii) of the Trade Marks Act, 1999, for rectification of a registered trade mark during the pendency of the suit.

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World Consumer Rights Day

The World Consumer Rights Day is celebrated every year on March 15 and is an occasion to celebrate and promote solidarity with respect to the international consumer movement. It commemorates the date in 1962 when the American President John F. Kennedy first defined ‘Consumer Rights’. This day is an opportunity to promote the various fundamental rights of consumers worldwide. The theme this year was ‘#AntibioticsOffTheMenu’.

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INDIA: Monsanto Served Notice for Revocation of its Bt Cotton Patent

According to The Indian Express, a leading Indian daily, the Department of Industrial Policy and Promotion (DIPP) has recently served a show cause notice to Mahyco Monsanto Biotech (India) Private Limited (MMBL) on March 03, 2016, calling upon it to explain why its patent for the Bt cotton technology should not be revoked under the provisions of the Indian Patents Act, 1970. The reason for this being, that the patented product, which MMBL claims to be resistant to pink bollworms, is allegedly no longer working as claimed.

 

Brief Background

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Monsanto is an American multi-national corporation known for its contribution to the field of genetically modified crops around the world. In India, Monsanto sells a genetically modified version of Cotton seeds known as Bt Cotton and marketed as Bollgard (containing the Cry1Ac protein / Mon-531 gene) and Bollgard-II through their Indian counterpart MMBL. Bt Cotton is claimed to contain an insecticidal protein, whose gene has been derived from a soil bacterium called Bacillus thuringiensis (Bt), making the seed resistant to bollworm attacks. The 2014-2015 Annual Report of the Cotton Association of India has stated that the acreage under Bt cotton in the country has reached to 96% of the total acreage of around 129.71 lakh hectares where Bt cotton is cultivated. This data shows the overwhelming use of Bt Cotton for cultivation with almost the entirety of the seeds used being manufactured by Monsanto.

 

Patenting History of Bollgard and Bollgard-II

 

Monsanto was first granted a patent for the first version of their Bt Cotton seed, Bollgard in the United States in 1992, which expired in 2012. In India, Monsanto tied up with Mahyco (which later became Mahyco Monsanto in 1998) to import Bollgard. The Genetic Engineering Appraisal Committee (GEAC) gave Monsanto permission to commercially release Bollgard in 2002 and Bollgard-II in 2006. Interestingly, it appears from a brief research that Monsanto did not file for grant of a patent for Bollgard in India.

 

In 2008, an indigenous seed containing the Cry1Ac gene was developed by researchers at the University of Agricultural Sciences (UAS), Dharwad, Karnataka in India. However, reportedly, under the assumption that Monsanto had a patent on this gene, UAS was not allowed to sell the seed commercially on the directions of the Ministry of Environment and Forests[1].

 

Bollgard-II involves the introduction of Cry1Ac and Cry2Ab genes from Bt into cotton plants and Monsanto claimed that it conferred resistance against American bollworm, pink bollworm and spotted bollworm. Through Indian Application no. 1947/CHENP/2003, Monsanto was granted a patent (Patent No. 232681) for the cottonseeds on March 20, 2009 w.e.f. June 05, 2002.

 

Failure of Bollgard and Bollgard-II

 

In 2009, Bollgard began to fail as bollworms became resistant to the Cry1Ac gene. According to a press note issued by Monsanto, resistance to Cry1Ac was seen in only four districts in the Indian state of Gujarat i.e. Amreli, Bhavnagar, Junagarh and Rajkot. Further, according to the information provided on the company’s website, no insect resistance has been confirmed outside the four districts in Gujarat[2].

 

The company recommended that it would be safer for the farmers to adopt Bollgard-II instead.

 

In 2015, it was first reported by the Central Institute of Cotton Research (CICR) that Bollgard-II has also started to develop pink bollworm[3]. Surveys have indicated that the damage to the cotton crop from pink bollworm attacks are “particularly severe” in Gujarat with an estimated 9 per cent yield loss, and it was found to have spread to wider areas. Monsanto said that while results of the CICR study were awaited, internal studies indicated resistance by pink bollworm in some districts of Gujarat to Cry2Ab protein, a key component of Bollgard II. This has reportedly been proliferated by improper insect resistance management practices, absence of refuge (non-Bt seeds), and spread of illegal seeds[4].

 

Revocation of Patent?

 

Revocation of a patent can be done under Section 64 or Section 66 of the Indian Patents Act, 1970. Section 64 provides for revocation of patents, as long as certain grounds as laid down are met. An application for the revocation of a patent can be made by any interested party or the Central Government. The important provision with regard to this situation is Section 64(1)(g) which provides that an application for revocation can be made if the invention is not useful. This raises the question as to what constitutes “not useful” i.e. whether it includes a situation where the invention does not work at all or does not produce the desired result claimed in the patent specification.

 

In this regard it may be pertinent to note the judgment of the Bombay High Court in Farbewerke Hoechst v. Unichem Labs and Ors. [AIR 1969 Bom 255], where it was observed in paragraph 17 that even if the amount of utility of an invention is very small, if an invention is of some use to the public it is considered sufficiently useful. Further in paragraph 20 of Farbewerke, the Court observed that:

 

““not useful” in patent law means that… it will not do what the specification promises that it will do. If the invention will give the result promised at all, the objection on the ground of want of utility must fail”.

 

In view of the above, it appears that if the specification in Monsanto’s patent on Bollgard-II claims that the invention is resistant/ tolerant to pink bollworms but is no longer displaying that resistance and the invention is not giving the result promised, grounds for revocation can be made out.

 

Other Legal Disputes

 

Interestingly, Monsanto is also facing legal challenges on the price at which the Bt cotton seeds are sold to the public. Cottonseed is an essential commodity under Section 2(a)(ix) of the Indian Essential Commodities Act, 1955. Under Section 3(2)(c) of the Act, the Central Government can make orders for controlling the price at which cottonseed can be sold. The Central Government issued the Cotton Seed Price Control Order, 2015 on December 07, 2015 [G.S.R. 936(E)] for controlling the price at which Bt cotton seeds can be sold in India. The said Order created a panel which would fix the maximum price of Bt Cotton seeds. On March 08, 2016 vide Standing Order bearing No. S.O. 686(E), the Central Government fixed the Maximum Sale Price of Bollgard-II at INR 800 with the Trait Rate being fixed at INR 49[5].

 

Monsanto challenged the Order in Mahyco Monsanto Biotech (India) Pvt. Ltd. and Anr. v. Union of India and Ors [W.P. (C) 12069/2015] before the Delhi High Court asking for a stay which was refused by the Court who asked for the Central Government to file a counter affidavit on March 04, 2016. The Court on March 04, 2016 heard in part impleadment applications and ordered that the matter be listed for the end of the board on March 09, 2016[6]. On March 09, 2016, the National Seed Association of India, Bhartiya Janta Kisan Morcha and Indian Kisan Sabha were impleaded as respondents and the matter has been listed for hearing and disposal on March 23, 2016[7].

 

In a combined judgment dated February 10, 2016 in Re: Department of Agriculture, Cooperation and Family Welfare And M/s Mahyco Monsanto Biotech (India) Limited (MMBL) [Reference Case no. 2 of 2015] and M/s Nuziveedu Seeds Limited & Ors. And M/s Mahyco Monsanto Biotech (India) Limited & Ors. [Case no. 107 of 2015], the Competition Commission of India (CCI) has ordered that the Director General (DG) make a detailed probe into alleged abuse of dominance by MMBL. The CCI was of the view that there exists a prima facie case of contravention of the provisions of Section 3(4) and Section 4 of the Indian Competition Act, 2002. The CCI has also asked the DG to submit his report within 60 days.

 

Conclusion

 

The patentability of Monsanto’s Bt cottonseeds, sold as Bollgard-II, is facing challenge at present as the cottonseeds are allegedly no longer functioning as claimed by the company in its specification. The present issue has opened up the possibility that a patent may be revoked under Section 64(1)(g) of the Patents Act for being “not useful”, and may thereby set a precedent where a patent may be revoked if, after a period of time, the product or invention is no longer able to produce the same result as promised due to a build-up of tolerance. The eventual outcome in this matter however is yet to be seen.

[1] http://timesofindia.indiatimes.com/city/nagpur/Bt-cotton-Govt-admits-Monsanto-never-had-patent-in-India/articleshow/48674689.cms

[2]http://www.monsanto.com/newsviews/pages/india-pink-bollworm.aspx

[3]http://www.cicr.org.in/pdf/Kranthi_art/Pinkbollworm.pdf

[4]http://timesofindia.indiatimes.com/city/nagpur/Is-Bt-Cotton-no-longer-safe-against-pink-bollworm/articleshow/50967835.cms

[5]http://egazette.nic.in/WriteReadData/2016/168441.pdf

[6] http://delhihighcourt.nic.in/dhcqrydisp_o.asp?pn=52511&yr=2016

[7] http://delhihighcourt.nic.in/dhcqrydisp_o.asp?pn=54662&yr=2016  

 

 

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India: Court's Permission not required for Rectification of Trademark during Pendency of a Suit

 

In a recent decision rendered by the Full Bench of the Delhi High Court in the case of Data Infosys & Ors. v. Infosys Technologies Ltd. [FAO (OS) 403/2012], the Hon’ble Court sought to provide some clarity and solve the judicial conflict on the question whether prior permission of the Court is necessary under Section 124(1)(b)(ii) of the Trade Marks Act, 1999, for rectification of a registered trade mark during the pendency of the suit. The Court held, by a majority, that prior permission from the Court was not necessary for initiating rectification proceedings during pendency of the suit. It was also held that if a party failed to file rectification proceedings in the time period granted by the Court, upon prima facie tenability of the invalidity of the registration of the trade mark, the suit would not be stayed and the plea of invalidity would be deemed to have been abandoned.

 

Brief facts of the case –

 

Infosys Technologies Ltd. filed a suit against Data Infosys, before the Delhi High Court for trademark infringement of its registered trade mark “Infosys” and sought a permanent injunction. However, during the pendency of the suit, the Appellant’s application for registration of its mark, “Data Infosys”, was accepted and was registered under Classes 9, 38 and 42. Upon becoming aware of this, the Respondent herein immediately filed rectification proceedings against such a registration without taking the leave of the Court.

 

Contentions by the Appellants (Data Infosys & Ors.) –

  1. The Appellants contended that the proceedings for rectification of their trademark cannot be initiated without the prima facie satisfaction of the plea of invalidity of registration of the trade mark by the Court. It was also contended that the suit cannot be adjourned and stayed under Section 124(1)(b)(ii) of the Act to await the outcome of the rectification proceedings initiated by the Respondent before the Intellectual Property Appellate Board (hereinafter referred to as the “IPAB”).

  2. By becoming aware of the proceedings, the Respondent initiated the filing for rectification procedure without taking leave of the Court. This constituted an abuse of power and the proceedings under IPAB were, thus, null and void. Later, however, the Learned Judge considered and dismissed the said proceedings.

  3. The Appellants argued that permission under Section 124(1)(b)(ii) is a condition precedent and mandatory. If the rectification proceedings are filed without obtaining such permission, the proceedings are not maintainable. It was argued specifically that not applying for rectification, as has been mentioned clearly in Section 124, is the statutory abandonment of the plea. Further, autonomy under Section 124(5) to the Court to proceed and to make interlocutory orders including injunction emphasizes the interpretation pressed by the Appellants. It was further contended that if the prior permission through the Court as to invalidity is not obtained, the right to apply for rectification is precluded.

Contentions by the Respondent (Infosys Technologies Ltd.) –

  1. The Respondent sought rectification of the registered trade mark "Infosys" under Classes 38, 9 and 42 while taking leave of the Court to amend the written statement on permission.

  1. The Respondent argued that no permission is required or mandated by Section 124 of the Trade Marks Act, 1999, before filing the petition with the IPAB. He argued that it is a mere procedural provision dealing with the stay of a suit in various situations concerning infringement actions. Substantive jurisdiction of IPAB is derived from the provisions of Sections 47 and 57 of the said Act.

The Respondent also relied upon the Madras High Court decision in the case of B. Mohamed Yousuff v. Prabha Singh Jaswant Singh & Ors. (WRIT APPEAL No.863 of 2006).

 

Observations & Decision of the Court –

  1. The Court observed that as per Section 124, the Court’s jurisdiction extends only to examining whether a prima facie case for invalidity exists only for the limited purpose of granting an adjournment/stay, while the IPAB has the exclusive jurisdiction to decide on the validity of registration of the trade mark. An infringement suit in a civil court and the process of rectification can proceed separately.

  2. The Court held that the IPAB has exclusive jurisdiction to consider and decide upon the merits of the plea of invalidating of a trademark registration, and that access to IPAB is not dependent on a Civil Court’s prima facie assessment of tenability of a plea of trade mark registration. While doing so, the Court also overruled the decision in the case of AstraZeneca UK Ltd. v. Orchid Chemicals (2006 (32) PTC 733 Del) that a party cannot avail the remedy of rectification of a registered trade mark unless the Court trying the suit for infringement of the same mark rules it to be prima facie tenable.

  3. The Court held by a majority that the only two situations where a suit for infringement action can be stayed are as follows-

    • When the rectification proceedings have been filed before the institution of such suit, or;

    • When the plea of invalidity of the trade mark registration is held prima facie tenable.

  4. The Court also mentioned that if indeed held tenable, if the party does not file the rectification proceeding in the time period granted by the Court, the plea of invalidity shall be deemed to be abandoned in the infringement suit and no stay shall be granted.

The appeal was, therefore, remitted back to the concerned Division Bench on February 11, 2016, subject to the orders of the Hon’ble Chief Justice.

 

Conclusion –

 

The Full Bench of the Delhi High Court thus finally provided clarity by holding that both the IPAB and Civil Courts have exclusive jurisdiction and a party does not require prior permission from the Court to have access to file the proceedings in the IPAB and situations where a suit of infringement can be stayed. The said judgment is available here.

 

 

 

 

 

 

 

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World Consumer Rights Day

 

The World Consumer Rights Day is celebrated every year on March 15 and is an occasion to celebrate and promote solidarity with respect to the international consumer movement. It commemorates the date in 1962 when the American President John F. Kennedy first defined ‘Consumer Rights’. This day is an opportunity to promote the various fundamental rights of consumers worldwide, to demand that such rights are respected and protected, and to protest the market abuses and social injustices undermining them. Citizen action has been mobilized through this movement. Initiatives such as campaigns, public exhibitions, press conferences, workshops, street events etc. are held all over the world every year in order to celebrate this day.

 

The theme for the year 2016 was ‘Antibiotic Resistance’. Consumer groups all over the world came together to tackle a possible major public health crisis on an international level, that is, the use of antibiotics in poultry used for human consumption leading to an alleged antibiotic resistance in humans. A campaign was started, called ‘#AntibioticsOffTheMenu’, following the said theme. Consumers International, an independent and authoritative global voice for consumers, called on the hospitality and food & beverage industry to make commitments on a global level to stop serving meat from animals regularly given antibiotics used in human medicines. In March 2014, Consumers International had published recommendations setting out the measures needed to be taken to reduce the use of antibiotics in farming. It has been reported that the overuse of antibiotics is creating highly resistant superbugs. If no action is taken urgently, the world may head into a post-antibiotic era, in which medicines may stop working and common infections and minor injuries may once again start becoming dangerous and may not be contained by the development of new drugs. If drastic measures are not taken to bring down the global consumption of antibiotics, the world may face the return to an era where even the simplest of infections could be harmful. The existing practice of routinely giving farm animals antibiotics is reported to be contributing to this particular threat.

The hospitality and food & beverage industry is believed to be in a position to use its buying power to make a huge difference to the global supply chain. This may be able to affect a change much faster than governments by using their purchasing power to speed up the phasing out of the practice of regularly administering farm animals with antibiotics that are used in human medicine as well. With regard to this, the Legal Metrology Act, 2009, and the Consumer Protection Act, 1986, can be invoked to mandate it for manufacturers of meat products to mention on the packaging of the packaged meat products whether the meat products are derived from animals dosed with antibiotics. This would enable consumers to make a well-informed decision while buying such products, who may choose to stay away from such products by opting for the antibiotic-free ones. Thus, this may play an important role in persuading food companies to make the requisite changes needed to stop this global public health threat and protect the medicines for humans for the future.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

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