Singapore

Patent Litigation

Rectification of the Register

Mirandah Law recently prevailed in the ground-breaking Singapore High Court case Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co [2017] SGHC 322 which addressed certain key procedural issues in rectification of the Patents Register for the first time in Singapore jurisprudence.

Ruling in our client’s favour, the Court allowed our application to reverse corrections made to the Patents Register by the Defendant. The Court ruled the defendant should not be permitted to seek correction under Rule 58 of the Singapore Patent Rules of an error made in an earlier application in respect of a granted Singapore patent.

Instead, in accordance with our submissions, the Court ruled that the proper procedure for correction of earlier errors made in application for granted Singapore patents is through Rule 91 and Section 107 of the Singapore Patents Act.

Furthermore, following earlier decisions of the European Patent Office, the Court ruled that even if the Defendant had followed the correct procedure, its application for correction would have been rejected due to too much time having elapsed since the error, and a lack of ‘exceptional’ reasons for correction.

‘The Pregabalin Case’
In the 2017 landmark case of Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2017] SGCA 45 before the Singapore Court of Appeal, Mirandah Law was successful in arguing that the amendment of a patent, post-grant, from a ‘method of treatment’ to a ‘Swiss-style’ claim, extends the scope of said patent and thus is an unlawful amendment under the Singapore Patents Act. This upheld the earlier decision of the Singapore High Court which had also been in our client’s favour. Our successful litigation has led the Intellectual Property Office of Singapore (IPOS) to review its practices relating to post-grant amendments and second medical use claims.

Lonza v Genpharm
In the recent case of Lonza Biologics Tuas Pte Ltd v Genpharm International Inc [2015] SGIPOS 15 before IPOS, we were victorious in revoking a patent held by the proprietor (Genpharm) on behalf of our client Lonza. We successfully argued that the patent concerned lacked inventiveness, and therefore the adjudicator ruled that the proprietor must amend the claims in their patent specification – allowing our client to proceed with its product development services in Singapore without fear of infringing the patent.

Trade Mark Litigation

Polo/Lauren v USPA
A famous recent example of our success in fighting for our clients’ trade mark protection in Singapore was in the recent case of Polo/Lauren Co. LP v United States Polo Association [2016] SGHC 32. At the Intellectual Property Office of Singapore (IPOS), Ralph Lauren claimed that their iconic polo rider on horseback, ubiquitously depicted on shirts across the world, had been infringed by the logo of our client USPA due to its similarity – and that USPA’s mark had been registered in bad faith. Both of these claims having been rejected by IPOS, Ralph Lauren appealed to the High Court of Singapore on the first claim – that the marks’ similarity would be likely to cause confusion to the consumer. The High Court accepted our arguments and dismissed Ralph Lauren’s appeal awarding costs to our client.

 

Malaysia

Patent Litigation

Pfizer v Ranbaxy
Through counsel, we have recently secured victory in the landmark Malaysian pharmaceutical patent litigation case Pfizer Ireland Pharmaceuticals v Ranbaxy (M) Sdn Bhd. With one of the world’s most common over-the-counter drugs as its subject, this ground-breaking case set the tone for the scope of post-grant amendments in Malaysia, harmonising a previous conflict between Malaysian patent statute and Rules of Court.

Trademark Litigation

Yuasa v Yuasuhi

On several occasions, we have assisted clients through counsel in appeals concerning trademark oppositions. In the case of GS Yuasa Corporation v Amalgamated Batteries Manufacturing (Sarawak) Sdn Bhd, the High Court allowed our client’s appeal and ordered that the Applicant’s trademark, “YUASUHI”, be removed from the Trademark Register.

Johnson Suisse v Johnson

We have also worked on behalf of clients to successfully dismiss appeals against the grant of our clients’ marks – such as in the case of Johnson Suisse Holding AG v H & R Johnson Tiles Ltd, where our local client, the defendant, was able to retain their mark despite the plaintiff appealing to the High Court.

 

Thailand

Eli Lilly v Novartis
Working through counsel, we were able to secure another successful outcome in a recent major pharmaceuticals patent litigation suit in Thailand, that of Eli Lilly v Novartis. Concerning a famous cancer drug, in this case we argued successfully against infringement claims put upon our client – and successfully counterclaimed for the invalidation of two patents held by the plaintiff, arguing that their claims lacked scope and clarity. Before the trial was concluded, the two parties settled out of court, and our client was able to go on with its lucrative business of importing and selling the drug concerned.

Indonesia

‘Prestone’ v ‘Prestop’

Acting through counsel in the Supreme Court case of Honeywell International v PT Teguh Mulia Perdana and Drs Negrat Kwandou, we successfully litigated on behalf of the plaintiff, a US multinational, to remove a product from the market that infringed upon their trademark.

The Jakarta Commercial Court had earlier ruled that the defendants’ mark PRESTOP did not infringe upon our client’s mark PRESTONE, despite being visually and aurally similar, being used to sell the same product ,and even possessing roughly exactly the same labelling as our client’s mark!

Undeterred, we appealed on behalf of our client to the Supreme Court and won, giving due recognition to our client’s trademark as a famous mark used by a foreign entity in Indonesia, and finding that the local company infringed upon our client’s mark.