“Extension of Limitation” by Supreme Court of India in view of Covid-19 Virus

The Supreme court of India has taken suo moto cognizance in a petition for “Extension of Limitation” in view of the situation arising out of the challenge faced by the country on account of Covid-19 Virus and resultant difficulties that may be faced by litigants across the country in filing their petitions/applications/suits/ appeals/all other proceedings within the period of limitation prescribed under the general law of limitation or under Special Laws (both Central and/or State). 

In order to obviate such difficulties and to ensure that lawyers/litigants do not have to come physically to file such proceedings in respective Courts/Tribunals across the country, the Court ordered that a period of limitation in all such proceedings, irrespective of the limitation prescribed under the general law or Special Laws whether condonable or not, shall stand extended w.e.f. 15th March 2020 till further order to be passed by this Court.

While pronouncing the order, the court exercised the power under Article 142 read with Article 141 of the Constitution of India and declared that this order is a binding order within the meaning of Article 141 on all Courts/Tribunals and authorities.

The court has also directed that this order may be brought to the notice of all High Courts in India for further communication to all subordinate Courts/Tribunals within their respective jurisdiction.

In view of this court’s order, it is likely that the Indian Patent Office and the Indian Trade Marks Registry issue specific notices clarifying automatic extension of time in respect of matters, such as filing of applications (including PCT filing), replying to office action, filing of any other documents in respect of application/opposition/rectification, hearings and in any other related matter, where there is prescribed deadline falling on March 15, 2020 and thereafter. This will bring relief not only to the applicant/opponent/petitioner/respondent and other interested parties in any proceeding but also to attorneys and agents in India and abroad. 

Indian Patent office launched Comprehensive e-filing facility

In an official function held on December 15, 2012, the Indian Patent office launches the facility of Comprehensive online filing. This newly launched facility by the Indian Patent office is a bold step towards a paperless virtual office in the future.

Though the Indian Patent office has first launched the e-filing services in the year 2007, such facility was limited only to filing of patent applications. However, the newly developed online facility has been integrated to file patent applications and other subsequent requests along with the prescribed fees through the electronic gateway. The service is aimed at simplifying the e-filing process and to eliminate transaction errors.

The launched on-line filing facility is a web based system which allows a dual way login through User Id or Digital signature. Now a user can comfortably own and manage personal folders in the Patent office environment. For this, the user simply needs a Digital signature and an internet banking account for e-filing.

According to the information revealed by the Patent office, there has been remarkable growth in the e-filing of application since the commencement of e-filing facility in the year 2007. Until the end of November 2012, it is estimated that about one-third of the patent applications filed in the Patent Office have been through the electronic means. Hence, the launch of the comprehensive e-filing facility is expected to enhance the confidence of applicants and patent attorneys and further augment the practice of filing patent applications through the electronic mode.

ONLINE FACILITY LAUNCHED TO CORRECT ERRORS IN THE DATABASE OF INDIAN TRADE MARKS REGISTRY

By virtue of a Public notice dated September 17, 2012, the Controller General of Patents Designs and Trade Marks of India (CGPDTM), launched an online tool for making request for correction of clerical errors in the records the Trade Marks Registry’s database. In order to attend to such request for correction, a link has been provided for in the official website of CGPDTM.

The notification provided by CGPDTM points that in case of any clerical error in the data entry of a pending application for registration of trade mark or in the records of Trade Marks Register in respect of a registered trade mark, the applicant/proprietor or their authorized agent may avail this facility and request for the desired correction through the online tool. However, such request for correction has to be on the basis of supporting documents, which is also required to be uploaded through that tool.

Once the request for correction has been made, the competent officer of the Trade Marks Registry will scrutinize such requests on the basis of the existing records and supporting documents uploaded by the applicant/proprietor/agents and in cases of genuine errors, such officer shall correct the relevant records.

The notification also clarifies that this online tool is meant only for the correction of clerical/typographical errors that have crept in during the data entry stage and not for the recordal of any change or amendment that has taken place during the course of prosecution of an application or grant of registration of a trade mark.

Roche Vs. Cipla : Court rules in favour of Cipla

In an infringement action initiated by F. Hoffman-La Roche Holding AG against generic drug company, Cipla Ltd for manufacturing and marketing the generic version of its patented anti-lung cancer drug Erlotinib Hydrochloride, the Delhi High Court on September 7, 2012 has held that Cipla’s drug, Erlocip, did not infringe the Roche’s patented drug, Tarceva. The court also said that Roche's patent over Tarceva is valid in India.

The 280 page decision pronounced by Justice Manmohan Singh is the outcome of the infringement action initiated by Roche in January 2008. The court observed that Cipla’s generic version drug was a polymorph B variant of Roche’s patented drug and that such drug has not infringed upon Roche’s patented drug. Section 3 (d) of the Indian Patents (Amendment) Act 2005, allows patenting of inventions which are variants of a basic compound if such versions results in the enhancement of the known efficacy of that substance.

Roche's Tarceva is priced at Rs.1.40 lakh ($2,533) for a month's treatment, while Cipla's version cost about Rs.25,000, i.e., approximately six times cheaper for the same dosage.

Now, Roche has the option to challenge such decision as appeal to a division bench of the Delhi High Court.

Expansion of “Classification of Goods and Services” proposed

In a public notice dated August 16, 2012 the Registrar of Trade Marks has proposed to publish a detailed classification of goods and services for the purpose of registration of trade marks. The proposed publication is in accordance with Section 8 of the Indian Trade Marks Act which prescribes that the Registrar may publish in the prescribed manner, an alphabetical index of classification of goods and services.

At present, India follows the international classification of goods and services (NICE classification) for registration of trade mark. Section 7 (1) of the Indian Trade Marks Act 1999, provides that the classification of goods and services has to be, as far as may be, in accordance with the International Classification of goods and services. Further, in accordance with Section 7 (2), any question arising as to the class within which any goods or services falls shall be determined by the Registrar whose decision shall be final.

Through this public notice, the Registrar desires to include the goods and services of “Indian Origin” in the classification of goods and services. Therefore, the Registrar has requested advocates, attorneys and the general public to point out those goods and services of Indian origin which are not mentioned in the current edition of the international classification of goods and services. The Registrar has also requested to suggest to him the appropriate class of such goods and services of Indian origin.

The proposal by the Registrar to add goods and services of Indian origin to the international classification is a welcome step since such goods and services of Indian origin are not mentioned in the international (NICE) classification. Also, including those goods and services in the international classification shall eliminate any confusion in identifying the correct class of such goods and services while applying for and obtaining registration of trade marks.

Simplification of process of filing of PCT National Phase Applications in India

With effect from July 6, 2012 an applicant will not be required to file multiple copies of documents while filing a PCT National Phase application in India as the Indian Patent office will access such documents electronically from International Bureau (IB). This was notified by the Controller General in a public notice dated July 2, 2012. This has become possible since the Indian Patent office has in coordination with the IB of the World Intellectual Property Organization has acquired online access to the PCT International applications and related documents available with the IB. As a result of this development, the Indian Patent office will be able to utilize their valuable resources in a more efficient manner and minimize errors occurring due to manual data entry. However, this facility will be applicable only to those PCT National Phase applications entering India which do not claim priority of any other PCT National Phase application filed previously in India.

For clarifications, the Controller General has provided the following instructions:

(i)                 For filing a PCT National Phase application in India, which does not claim priority of any PCT National Phase application filed previously in India, the contents that shall be required in Form 2 are:

(a) Title of invention, (b) applicant’s name, nationality and address (c) Preamble to the description of the invention (columns 1, 2 and 3 respectively of Form 2), and (d) the last page of claims (first page, if the claims comprise of only one page) with date and signature.

(ii)              Other details, such as description of the invention, claims and abstract of invention are not required to be mentioned in Form 2. However, if such details are mentioned in the form, the Indian Patent office will ignore such details and instead consider the contents of details provided in the PCT International applications by accessing them from IB. Similarly, the columns 7 and 8 of Form 1 (i.e., Particulars for filing divisional application and particulars for filing Patent of Addition respectively) need not be provided for while filing a PCT application. It is also clarified that the Indian Patent office does not allow an applicant to amend the specification or the related documents before he actually enters National Phase in India.

(iii)            The documents to be filed by an applicant should exactly correspond with the updated information available on the records of IB on the date of filing of a PCT National Phase application in India. Such information must have been notified/published by the IB in accordance with the PCT and the regulations made thereunder. Any request pending before the IB shall be of no consequence and should not be reflected in the documents. If any such request is reflected in the documents, the information notified/published by IB shall prevail.

(iv)            The requirement of filing complete specification and abstract on Form 2 at the time of filing of a PCT National Phase application in India is being dispensed. However, where the international application was either not filed or has not been published in English language, the applicant shall be required to file a translation of such application in English language, duly verified by the applicant or the person duly authorized by him that the contents thereof are correct and complete.

(v)              The applicants will be required to comply with all other requirements in accordance with the provisions of the Indian Patents Act, 1970 and rules framed thereunder.

 

The trade mark “VISCOF DP” is held deceptively similar to “VISCO”

The Indian Intellectual Property Appellate Board (IPAB) in their order dated June 25, 2012 held that the mark VISCOF-DP is similar to the prior mark VISCO and accordingly dismissed the appeal.

In this case, the appellant (applicant) was M/s. Tauras Laboratories Pvt. Ltd, Ahmedabad, who appealed against the order of Deputy Registrar of Trade Marks allowing the opposition and refusing an application for the mark VISCOF-DP in Class 5. The respondent (opponent), M/s. Aristo Pharmaceuticals Ltd., Mumbai was the registered proprietor of the trade mark “VISCO” and claimed use of such mark since the year 1987. 

In their judgment, the IPAB observed that the goods in respect of the marks, VISCO and VISCOF DP being medicinal products, more care has to be taken to decide the case. The IPAB further observed that the appellant’s goods are for treatment of cough whereas the respondent’s goods are for treatment of gastric acidity. This means that the ailments to cure the disease for goods of the appellant and respondent are different.  If one is taken for the other it would definitely cause bad effects upon the user (patient). The IPAB also observes that it has been held by various courts that “if by wrong pronunciation one consumes a medicine for the other then the injury is serious which cannot be compensated in terms of money”. Moreover, in an application for registration the onus is on the applicant to prove that the mark deserves to be registered. In the present case, the appellant has failed to prove the same and therefore, the registration of the trade mark VISCOF DP has to be rejected under Section 11 of the Act (Indian Trade Marks Act, 1999). Accordingly, the Board (IPAB) dismissed the appeal.