The Interplay of Infringement and “Me Too” Registration

In 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.

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About the Authors:

Manisha Singh (Partner)

Ms. Singh is a seasoned IP professional holding a decorated career spanning over 2 decades and repute as one of the most distinguished lawyers in the domain. She started her career at a time when Indian IP laws and practices were undergoing substantial changes pursuant to India’s obligations to comply with the TRIPS agreement. Through the years, she has been consistently involved in the betterment of the country’s IP regime and has been engaged in advising Indian policymakers, implementers, and IP owners on global IP standards and enforcement systems.

She is a true strategist and has led some of the most prominent and complex cases for large multinational and domestic corporations. She is identified by her clients as a seasoned and reliable counsel for the prosecution and enforcement of all forms of IP rights and planning and management of global patents, trademarks, and designs portfolios. She has also led numerous negotiation deals on behalf of her clients for both IP and non-IP litigation and dispute resolution.

Ms. Singh has served as the leading counsel for a client base in over 138 countries in their IP management and litigation matters. She has assisted numerous technology giants, Fortune 500 companies, globally renowned universities, and public sector research institutions in the APAC region, the USA, EUROPE, the UK, Oceania, Latin America, and MENA.

Ms. Singh is also the Standing Counsel for the Reserve Bank of India at the Delhi High Court and is known for her deep understanding of corporate, banking, and financial services laws. Manisha is a prolific writer and has contributed chapters in Indian IP laws to many leading publications including Mondaq, IP Media Group, Vantage Asia, Managing IP, Asia IP, CTC Media to name a few.

Neha Ruhela (Senior Associate)

Neha Ruhela, a senior associate at LexOrbis, is a registered patent agent. Her proficiency ranges over life sciences, IP practice and law. She holds a master’s degree in biotechnology and earned research experience at the Indian Institute of Technology, Bombay. On the professional front, she deals with drafting, prosecution, opposition and advisory matters, especially in biotechnology, biomedical, pharmaceuticals, nanotechnology and polymer-related inventions. She has a profound understanding of patent laws and regulations and keeps herself abreast of the latest trends in the sector.