The Interplay of Infringement and “Me Too” Registration

The Interplay of Infringement and “Me Too” RegistrationIn an infringement suit, GSP Crop Science Pvt. Ltd (‘plaintiff’) vs Devender Kumar (‘defendant’) against the defendant’s unauthorised use of the plaintiff’s patent, the Delhi High Court, in its order dated 19th January 2024, granted interim relief to the plaintiff based on the infringement analysis (as supplied by the plaintiff) and “me too” registration of the defendant’s product.

The plaintiff owns the suit patent (IN 384184) for “Liquid Composition of Pendimethalin and Metribuzin.” The patent relates to a liquid formulation comprising Pendimethalin (ranging from 10 to 40% w/w) and Metribuzin (ranging from 1 to 10% w/w) as active ingredients along with inert excipients, wherein Pendimethalin to Metribuzin is in the ratio of 1:1 to 25:1. The plaintiff asserted that the patented formulation provides a convenient combination dosage form of the active ingredients that has increased efficacy, stability and bio-equivalence to the corresponding free combination of the same active ingredients.

The plaintiff also obtained a registration for formulations of Pendimethalin 35% + Metribuzin 3.5% under Section 9(3) of the Insecticides Act, 1968, which are used in its commercialised product, ‘Platform’. In November 2023, the plaintiff learned that the defendant had launched a product called ‘Pendamic’, which is an imitation of the plaintiff’s novel and innovative product. After acquiring and scrutinising samples of the defendant’s product, the plaintiff discovered that the label on these products, setting out the ingredients used therein, clearly matches the claims of the suit patent. To support its argument, the plaintiff presented the infringement analysis of the defendant’s infringing product, wherein the comparison suggested that the use of active ingredients in the impugned product directly falls within the claims of the suit patent.

The plaintiff also argued that the defendant’s infringement is further substantiated by their acquisition of a registration under Section 9(4) of the Insecticides Act, 1968. Such registration, commonly known as a “me-too” registration, is only granted when a First Registration already exists under Section 9(3) of the said Act. This, as per the plaintiff, is effectively an admission of the fact that the defendant was aware of the suit patent and that the defendant’s product comprises a formulation that is identical to the suit patent. Moreover, it was stressed that the defendant could not deny being aware of the suit patent as the plaintiff’s product clearly carries a ‘Patented’ notice on the label, alerting any viewer to the fact that the plaintiff’s product ‘Platform’ is patented.

On considering the plaintiff’s contentions and also analysing the infringement analysis as provided by the plaintiff, the High Court held that the plaintiff had established a strong prima facie case to demonstrate infringement of the suit patent. The Court further noted that the defendant’s product was stated to have been launched only in the year 2023, as evidenced by the packaging of the product. Therefore, the balance of convenience also lies in favour of the plaintiff. Finally, it was noted that if the defendant is not restrained, the sale of the allegedly infringing products is likely to cause harm and damage to the plaintiff. Thus, by applying the standard of the triple test, the Court granted an ex-parte ad interim injunction in favour of the plaintiff.

The decision strengthens the enforcement of patents in the agrochemical sector. The term “me too” refers to products that closely resemble or imitate existing products on the market. Infringement occurs when these “me too” products violate the intellectual property rights of the original product. In this case, the plaintiff’s analysis demonstrated a case of direct (literal) infringement by one-to-one mapping between the features of the impugned product and the suit patent. The “me too” registration of the defendant’s product further added weight to the plaintiff’s infringement case.


Authors: Manisha Singh and Neha Ruhela

First Published by: IP Star here