Bombay HC bars Cipla from using Valcept trademark

In a new twist to the battle between domestic generic drug maker Cipla and Swiss drug major F Hoffman-La Roche over the anti-infection drug Valganciclovir, the Bombay High Court today restrained Cipla from using the trademark 'Valcept' for its copycat version of Valcyte, Roche's patented brand.

In a related development today, Roche filed a special leave petition before the Supreme Court of India, challenging the Madras High Court's decision last week directing the Indian Patent Office to review the patent granted for Valcyte in India. Sources said Justice Abhay Oke of the Bombay High Court granted Roche's plea to allow an injunction against Cipla for selling the drug with the name 'Valcept', which is confusingly similar to that of Roche's Valcyte. The court directed Cipla to implement the decision within three weeks.

"We are happy with the directive of the Bombay High Court," said Girish Telang, managing director of Roche Scientific Co (India). Meanwhile, Amar Lulla, joint managing director, Cipla, said the company would soon take a decision as to whether to appeal the decision and on withdrawing the product from the market. "There is no hurry and we have time to appeal the judgement on the trademark. We will take a decision at the appropriate time," he said.

However, he declined to reveal the sales figures and number of patients treated with Valcept since its launch in January this year. Cipla sells the product in the market at a lower price than Roche, sources said.

Roche had filed patent and trademark infringement cases against Cipla a few months ago seeking orders to stop the generic drug maker from selling its generic version. Valganciclovir is an important drug for HIV/AIDS patients to control eye infections.

Sources said that though counsels for Cipla today pleaded the High Court to quash Roche's case based on the order of the Madras High Court, the court decided to consider the case only after eight weeks.

The Madras Court had asked the Patent Office to review the patent granted on valganciclovir before January 31, 2009, and to give its hearing on the matter.

The Chennai court's decision was in response to a case filed by the Indian Network of Positive People and the Tamil Network of People with HIV/AIDS citing that their opposition was not heard before patent was granted for the drug.

The patent was granted to Roche in June 2007 and the drug lacks novelty for patenting in India, the Groups had argued. As per the Indian Patent Laws, a patent can be challenged within 12 months of grant of the patent.

The two companies are also engaged in a high-profile battle in the Delhi High Court over Cipla’s launch of another patented Roche drug, Tarceva (erlotinib), a lung cancer drug.