IPAB refers opposition to anti-cancer drug to patent office

The Intellectual Property Appellate Board (IPAB) has asked the patent office to consider afresh a matter related to the patent application of US-based Abraxis BioScience for its anti-cancer drug Abraxane, following pre-grant opposition by Hyderabad-based Natco Pharma.

Natco has developed a generic version of the drug under the brand name Albupax. Emails sent to Celgene, which acquired Abraxis BioScience in 2010, and Natco Pharma for comment on the order didn’t elicit a response till the time of going to press.

IPAB set aside an order of the Assistant Controller of Patents & Designs, saying it was passed in “flagrant violation of principles of natural justice”. An order issued by IPAB Chairman K N Basha and technical member (patents) DPS Parmar said it remanded the matter to the Assistant Controller of Patents & Designs for fresh consideration. It also directed the procedure be completed within three months from the date of the IPAB order.

On July 24, 2009, the assistant controller of patents & designs had refused to grant a patent to US-based Abraxis BioScience’s albumin-bound paclitaxel for an injectable suspension that had the brand name Abraxane and was used in the treatment of breast, lung and pancreatic cancers.

It has a net sales of $649 million and is expected to reach $1.5-2 billion by 2017, said the company's counsel. Abraxis Bioscience was acquired by New Jersey-based Celgene Corporation during 2010 and the upfront payment value of Abraxis BioSciences was at around $2.9 billion.

Natco Pharma complained that they were not offered a copy of an affidavit from Anindy Sircar who was a representative from Biocon, which was filed by Abraxis to establish enhanced efficacy. The bench ordered that the Assistant Controller should provide a copy of a particular affidavit to the generic manufacturer and they shall be given opportunity to give reply.

Justice Basha said that the bench is not going into the merits of the claim and contention of both the sides on merit and the order is only on the contention that there is a violation regarding principles of natural justice.

The first priority application for patent on the drug was filed by Abraxis on December 9, 2002 and the application was published under section 11 (A) on April 1, 2007, after which Natco Pharma has filed a pre-grant opposition against giving approval of patent to the drug. Natco has developed the generic version of the drug, under the brand name Albupax.

The originator firm argued in IPAB that the decision of Assistant Controller of Patents was wrong, and the order in dispute is liable to be set aside for gross violation of principles of natural justice. It contested that the Assistant Controller has heard and put in order on the grounds of insufficiency (which means the claims are not supported by the examples and description), which was not pleaded by Natco.

It also argued that the controller did not provide opportunity to the company to argue the dispute as per provision under Section 14 of the Patent Act, 1970, which is appealable. Instead, the petition was argued under section 25(1), which was not appealable during 2009. The counsel appeared for Abraxis informed that it was only after a Delhi High Court order observing that the pre-grant opposition is appealable, that the company could file an appeal with the IPAB.

The company also argued that during the procedure in the patent office, on March 10, 2009 Natco Pharma filed additional document and Abraxis objected taking this into consideration through an interlocutory petition. Without even looking into the said petition the controller proceeded to hear the matter, it alleged.

The counsel appeared for Natco argued that the impugned order does not cause any violation of principles of natural justice and said that the patent official was right in refusing patent for the drug.

The IPAB bench said that the finding and consideration on the ground of insufficiency, especially when it was not pleaded, “is illegal”.

Source:http://webcache.googleusercontent.com/search?q=cache:http://www.business-standard.com/article/companies/ipab-refers-opposition-to-anti-cancer-drug-to-patent-office-114012100719_1.html

Cadbury loses trademark case on Eclairs

 In a win for ITC Ltd, the Intellectual Property Appellate Board (IPAB) last week said that Cadbury India is no longer the owner of three trademarks containing the word Eclairs, putting to rest over a decade-old battle.

The three trademarks—Choclate Éclairs, Orange flavoured chocolate éclairs and Chocolate Eclairs pop—were ordered to be removed from the trademarks registry as the patent board found that Cadbury could not provide evidence showing the use of the three trademarks after they were registered.

“The only defence of the respondent is that they are registered proprietors both in India and abroad. Though the respondents (Cadbury) claim use since 1972, there is no evidence for the same,” said the order, adding that registration alone will not help the respondents to prove use. Cadbury is a subsidiary of UK-based Mondelēz International.

“Section 47 of the Trademarks Act, 1999, provides for removal by IPAB of a trademark on the ground of non-use, or if there has been no proof of use for a period of five continuous years from the date of application for registration of the trademark,” said Suchindran B.N., a lawyer practising at the Madras high court.

The implication of this order is that Cadbury can no longer claim to be the owner of the trademarks, which means Cadbury in the future cannot hold anyone for infringement of these marks, said R. Satish Kumar of Chennai-based law firm IP Lead.

Cadbury said it does not plan to pursue this matter further as the Cadbury Eclairs label has not been used by the company for a long time.

“The label mark for Cadbury Eclairs, which formed the subject matter of the litigation, has not been used by Cadbury for many years and hence we do not plan to take this matter further,” said a Cadbury India spokesperson in an email. “We continue to retain other trademark rights in the Cadbury Dairy Milk Eclairs brand and the IPABs decision, if any, has no bearing on those trademark rights. We are yet to receive IPAB’s order in this matter, therefore we wouldn’t be in a position to comment further on this, at this stage.”

The battle began when Cadbury’s in April 2005 filed an injunction in Ahmedabad high court seeking to restrain the use of the trademark Eclairs by ITC against its product called Candyman Eclairs. Since other manufacturers, too, have been using the word Eclairs, the court allowed ITC to use the name Candyman Choco Eclairs.

ITC filed an application with the IPAB in 2005 for the removal of the trademark from the registry.

Source:http://www.livemint.com/Companies/v2om2cMruwjp1CPzvPDXyO/Cadbury-loses-trademark-case-on-Eclairs.html

Nestle Owns Maggi said IPAB over Trademark Dispute

Trademarks are invaluable assets of every business. These indicate source of origin of goods and services and help the consumer’s in distinguishing goods and services of one person from that of another. Trademark indicates toward a superior quality to which the consumer associates the product with. They promote businesses and help in generating goodwill and brand value and it is on account of this inherent quality that they have emerged as one of the most sought after assets of the 21st century over which diverse claims are raised every day before the various Judicial and Quasi-judicial forums of the country.

In fact, the Indian Trademark Office is flooded with Oppositions to various Trademark Applications seeking registration of trademark for diverse categories of goods and services. One of the most recent Trademark disputes that had been decided by Quasi-Judicial Forum is that of the dispute over Trademark 'Maggi' between Switzerland based Multinational Giant Societe Des Produits Nestle and Mumbai based Swaraj Industrial and Domestic Appliances Pvt. Ltd. The Intellectual Property Appellate Board (IPAB) decided the dispute and rejected the trademark application of Swaraj industry for the registration of mark 'Maggi for various classes of goods including Home appliances, mixers and grinders.

'Maggi' is popular trade name / trademark held by Nestle for selling variety of food products around the world. This trade name has acquired distinctive character and has been in use in India since 1974. The dispute between Nestle and Swaraj industries over the trademark 'Maggi' began in 1990 when Swaraj Industries filed application for registration of mark 'Maggi' as trademark for home appliances, mixers, and grinders produced by it. Nestle Company resisted this application and claim by Swaraj industries over the mark 'Maggi'. Nestle filed opposition to the trademark office where the Senior Examiner rejected the claim by Nestle Company over the trademark 'Maggi' and held in favour of Swaraj industries thereby allowing the application for registration of trademark Maggi for Swaraj industries goods.

The Senior examiner had accepted applicant /swaraj industries argument that deception and confusion was least likely to be caused in the minds of consumer in relation to the source of origin of goods on account of trademark 'Maggi' being used by the companies for different class of goods. The senior examiner held that goods in question were quite distinct from that of Nestle and also held that Nestle could not establish its trademark was well known.

Swaraj industry had submitted before the Examiner that they had been using the mark since 1984 and the mark had acquired distinctive character with respect to their goods. Nestle on the other hand submitted that the term 'Maggi' was not a word found in dictionary and was in fact derived from the surname of the company founder Julius Maggi. Nestle also submitted that that Maggi as brand had been listed as a Super brand by many journals and crores of rupees are annually spent on the promotion of Maggi products with which people identify the company with. Nestle also submitted that trademark Maggi was being used by the company around the world since 1887 and was used in India since 1974. Nestle also submitted that it had registered Maggi as a trademark for various food product produced by it since 1970.

Nestle appealed against this order of senior examiner before the IPAB challenging the stance taken by the senior examiner of trademark office. IPAB thereafter set aside the order of the examiner and held that in favour of Nestle.

IPAB held that in case the application for registration of "Maggi" as trademark for home appliances by Swaraj industries is allowed then it was in all likelihood to cause deception and confusion in the minds of general public about the source of origin of goods. IPAB said that the goods for which Swaraj industry had claimed trademark protection were indeed "allied and cognate". IPAB said that the appellants/Nestle goods under the trademark "Maggi" are food and snack items that are purchased by the common man and the household goods of the respondent would make the common man think that the goods of the respondent emanate from the appellant source.

IPAB also observed that the respondent (Swaraj industries) had not achieved the burden of establishing the proprietorship, usage and reasons for the adoption of the trademark "Maggi". IPAB also said that respondents did not prove that such adoption would not cause deception and confusion in minds of general public in case the mark is already is vogue or is in use in another classes of goods.

Thus, IPAB set aside the order Senior Examiner and held in favour of Nestle thereby asserting the country strong initiative to protection of trademarks in India.

http://www.lawsenate.com/news/nestle-owns-maggi-said-ipab-over-trademark-dispute.html