Progression of IP Dispute Resolution- Transitioning from IPAB to Specialized IP Divisions in High Courts

The role of specialized tribunals, such as the former Intellectual Property Appellate Board (IPAB) and current IP division/benches in several High Courts, play a pivotal role in resolving intellectual property disputes. In 2020, the IPAB issued a decision in a trademark cancellation case, effectively cancelling the trademark ‘SOXPLAT’ due to its striking similarity with ‘OXIPLAT’. Before this decision, the plaintiff Sun Pharma Laboratories Ltd. had filed a trademark infringement suit based on its registered trademark ‘OXIPLAT’ which was utilized for promoting pharmaceutical preparations containing Oxaliplatin, a key component in cancer treatment.

The Defendant, Mylan Laboratories Limited, used the mark ‘SOXPLAT’. The plaintiff contended that this mark bore a deceptive resemblance to ‘OXIPLAT’ and consequently filed a lawsuit seeking a permanent injunction against the usage of ‘SOXPLAT’. The civil suit included an interim injunction application, which was dismissed by the Court. Furthermore, the Plaintiff’s subsequent appeal before the Division Bench was also unsuccessful.

However, the pivotal turning point occurred when the IPAB decided in favour of Plaintiff. The IPAB’s analysis revolved around the potential slurring of the vowel ‘I’ within Plaintiff’s trademark OXIPLAT, leading to a less pronounced and distinguishing pronunciation. Moreover, the IPAB noted that Defendant’s mark had the whole of Plaintiff’s mark, differing only in the initial letter ‘S’. The evaluation emphasized the phonetic effect of the soft consonant ‘S’, which failed to diminish the likelihood of confusion arising from phonetic similarity.

Following the cancellation of the defendant’s trademark ‘SOXPLAT’, the defendant voluntarily relinquished the use of ‘SOXPLAT’. In response, the plaintiff sought a summary judgment in an infringement proceeding before the Delhi High Court, asserting that the IPAB’s decision should be regarded as res judicata. The provision empowers the Court to grant summary judgment in instances where a party’s chances of success or defence are minimal and where there exists no compelling reason to record oral evidence.

Given the IPAB’s decision and the subsequent abandonment of ‘SOXPLAT’ by the Defendant, the Delhi High Court vide its decision dated August 2, 2023, ruled in favour of the Plaintiff, mandating the Defendants to discontinue the use of ‘SOXPLAT’. Additionally, recognizing the unique circumstances, the Court awarded the Plaintiff costs amounting to Rs. 5 lakhs.

This series of events exemplifies the efficacy of specialized intellectual property courts, in effectively resolving disputes, and safeguarding the intellectual property rights of pharmaceutical companies. It is noteworthy that the Intellectual Property Appellate Board (IPAB) was abolished in India on April 4, 2021. Subsequently, all pending appeal matters, and revocation/rectification actions were transferred to the commercial divisions of the High Courts at Delhi, Mumbai, Chennai, Gujarat, and Kolkata.

A significant development occurred in July 2021, with the establishment of the Intellectual Property Division (IPD) within the Delhi High Court to handle IP matters, including those transferred from the erstwhile IPAB. The IPD, operational since February 28, 2022, has ushered in expeditious case disposal. Moreover, the Madras High Court introduced IPD Rules in April 2023.

Transferred cases from IPAB, along with directly filed appeals/rectifications, are now being heard in the High Courts of Bombay, Gujarat, and Calcutta. The establishment of dedicated intellectual property divisions, along with corresponding rules, remains an ongoing endeavour.