The interplay of infringement and ‘me too’ registration in India

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

The interplay of infringement and ‘me too’ registration in India

Sponsored by

lexorbis-400px.png
Emblem of High Court of Delhi on the entrance gate. High court is the highest courts of appellate jurisdiction

Manisha Singh and Neha Ruhela of LexOrbis highlight a High Court of Delhi ruling concerning an imitating product registered on the back of an existing registration

In an infringement suit, GSP Crop Science Pvt. Ltd. v Devender Kumar, concerning the latter’s unauthorised use of the plaintiff’s patent, the High Court of Delhi, in an order dated January 19 2024, granted interim relief to the plaintiff based on an 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% weight of solute dissolved in weight of solvent, or 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 compared with 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 Platform, its commercialised herbicide product.

In November 2023, the plaintiff learnt 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 its acquisition of a registration under Section 9(4) of the Insecticides Act, 1968. Such a registration, commonly known as a me too registration, is only granted when a first registration already exists under Section 9(3) of the act. This, according to 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 Platform product is patented.

The High Court of Delhi’s ruling

On considering the plaintiff’s contentions and analysing the infringement analysis as provided by the plaintiff, the High Court of Delhi 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 2023, as evidenced by the packaging of the product. Therefore, the balance of convenience also lies in favour of the plaintiff.

Finally, it was acknowledged 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.

Implications of the decision

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 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 added further weight to the plaintiff’s infringement case.

more from across site and ros bottom lb

More from across our site

Speaking to Managing IP, Kathi Vidal says she’s looking forward to helping clients shape policy when she returns to Winston & Strawn
AA Thornton and Venner Shipley’s combination creates a new kid on the block, but one which could rival the major UPC players
Amit Aswal explains why you should take on challenges early in your career and why the IP community is a strong, trustworthy network
Five members of Qantm’s leadership team, including its new managing director, discuss how the business is operating under private equity ownership and reveal expansion plans
In our latest UPC update, we examine an important decision concerning the withdrawal of opt-outs, a significant victory for Edwards, and the launch of a new Hamburg-based IP firm
The combined firm, which will operate under the Venner Shipley name and have 46 partners, will go live in December
Vidal, who recently announced her departure from the USPTO, said she decided to rejoin the firm because of its team and culture
Osborne Clarke said John Linneker’s experience, including acting for SkyKick in the seminal dispute with Sky, will be a huge asset to the firm
Fieldfisher led arguments in court before Kirkland & Ellis took over shortly after SkyKick was acquired, it was revealed last week
Lawyers at Finnegan and Fross Zelnick explain why privacy formed a natural extension of their firms’ IP practices and share expansion plans
Gift this article