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ACUITY LAW UPDATE: INTELLECTUAL PROPERTY UPDATE FOR JUNE 2013
We have enclosed below our IP update for the month of June 2013 on certain key developments in intellectual property law in India. Hope you find it interesting! The Intellectual Property practice is
headed by Aishwarya Nargolkar. If
you need any additional information,
A. Patents
please contact Aishwarya at
1. Merck Sharp And Dohme Corporation and Anr. (Merck) Vs Aprica
Pharmaceuticals Private Limited (Aprica)
Acuity Law has been awarded as the
On 17 June 2013, the Delhi High Court passed an ex parte injunction order, preventing "best newcomer" law firm by IBLJ in
Aprica from launching generic versions of Januvia and Janumet and restraining them from the Indian Law Firm Awards, 2012.
selling, distributing, advertising, exporting, offering for sale and in any other manner, directly or indirectly, dealing in any product that infringes the registered patent - Sitagliptin and its derivatives.
Merck had filed this suit for permanent injunction for restraining Aprica from infringing its
registered patent in respect of Sitagliptin and its derivatives salt on the basis that, if
Aprica launched its product, irreparable loss and injury would be caused to Merck. The
next date in the matter is 13 August 2013.
2. Hindustan Unilever Ltd (Hindustan Unilver) appeal dismissed

The Intellectual Property Appellate Board (IPAB) dismissed the appeal filed by Hindustan
Unilever challenging the denial of patent for water-in-oil microemulsions for hair
treatment by the Controller of Patents and Designs (Controller).
According to the Hindustan Unilever, consumers who oiled their hair pre-wash and post-
wash get an unattractive appearance. This invention prevented such condition. However,
IPAB rejected the claim of Hindustan Unilever of this hair treatment being an "invention"
and upheld the view of the Controller.
B. Trademarks

1. Royal Orchid Hotels Ltd (Royal Orchid) Vs Kamat Hotel (India) Ltd. (Kamat
Hotel)

The IPAB allowed both the appeals filed by Royal Orchid against the Deputy Registrars
decision allowing an opposition filed by Kamat Hotel for use of two trademarks viz. 'Royal
Orchid Hotel' and 'Royal Orchid' in Class 42.
The IPAB rejected all the oppositions of Kamat Hotel and stated that the Royal Orchid's
name had become Royal Orchid Hotels Limited in 1997 pursuant to a resolution dated
1996 while Kamat Hotel claims to be using Orchid only since January 1997 and hence
there was no imitation of the name. Also, when the mark was considered in its entirety,
IPAB was of the opinion that there was no confusion in the name "Royal Orchid Hotels
Private Limited" and "Orchid".
2. Macleods Pharmaceuticals Limited (Macleods) Vs Intas Pharmaceuticals
Limited (Intas) & Anr.
The Bombay High Court (Court) rejected the plea of Macleods for an injunction against
Intas for violation of trademark of a medicine and "passing off". Macleods produces Anti-
Thyrox, a medicine brand used to treat thyroid deficiency, and Intas manufacturers
Lethyrox, for the same symptoms.
Macleods alleged that Intas violated its trade mark and therefore it should be stopped
from marketing the product to avoid confusion among the consumers.
However, the Court rejected the request stating that (1) the marks are distinct and
different; (2) Macleods had not established the ingredients of passing off action; (3) the
adoption of the name by Intas appeared to be honest, independent and bona fide; (4) the
rival packets placed before the Court also did not make out any case for confusion. The
Court then expedited the hearing of the main suit.
3. M/s. Gillette India Limited (Gillette) Vs. M/s. Harbans Lal Malhotra & Sons
Pvt. Ltd. (Harbans) and Anr.
The IPAB on 21 June 2013 rejected the submissions made by Gillette based on the
business ethics of Gillette not being in consonance with the international commercial
behaviour.
The principal grievance of Gillette was that the mark Champion registered in Harbans'
favour is a commonly used English word and so the mark is incapable being registered
under the Trademarks Act, 1999 and therefore the impugned marks are liable to be
removed from the register. Harbans on the other hand had been using the word
'Champion' since 1964 and were the largest in the market of manufacturing blades.
IPAB allowed Harbans to keep the Trademark noting that though it is laudatory expression
but can qualify for registration, if and when, it acquires secondary meaning.

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