+91 74838 06607 info@origiin.com

Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited {2001 (2) PTC 541 SC}

Apr 23, 2021 | Indian Patents Act 1970, IPR & Business

In this case, the two companies i.e., Cadila Healthcare and Cadila Pharmaceuticals had taken over the business of Cadila Group and one of the conditions of such takeover of Cadila Group was that, both the companies got equivalent right to use the name ‘CADILA’. The suit was brought before the court by Cadila Healthcare when it came to their knowledge that Cadila Pharmaceutical is using the mark “FALCITAB” which is similar to their mark “FALCIGO”; and that the mark was applied by Cadila Pharmaceutical for similar drug.

Hence, though this suit Cadila Healthcare claimed for injunction against Cadila Pharmaceutical to restrain them from using a mark which is deceptively similar and is likely to cause confusion. Brief facts of the case are as follows:

  1. Cadila Healthcare manufactured the drug “FALCIGO” which was used for treatment of cerebral malaria known as ‘Falcipharum’. They applied for Trade Mark registration in class 5 and obtained permission of Drug Controller General (India) to market the drug on 20th August, 1996 and 7th October, 1996 respectively, and have been manufacturing and selling their drug throughout India under the mark “FALCIGO” post such approvals.
  2. Cadila Pharmaceutical got permission on 10th April, 1997 from Drug Controller General (India) to manufacture drug containing “Mefloquine Hydrochloride” which was also used for treatment of ‘Falcipharum’. They manufactured and sold the said drug under the mark “FALCITAB”
  3. For the use of same, civil suit for injunction was filed by the Cadila Healthcare claiming that Cadila Pharmaceutical is passing-off their product under the pretext of same drug for treatment of similar disease and the same is likely to cause confusion.

Arguments

By Cadila Healthcare i.e., Appellant

  1. It was contended by Cadila Healthcare that similar mark had been used by Cadila Pharmaceutical for treatment of similar disease which is likely to cause confusion and deception.
  2. That the contention of Cadila Pharmaceutical that the mark is used in ‘Schedule L’ drug which is sold only to hospitals and clinics hence there is no chance of confusion does not hold true as chances human error and confusion cannot be ruled out even if it is handled by trained medical practitioner.
  3. That Cadila Pharmaceutical is passing off drug of Cadila Healthcare by using the mark “FALCITAB” for another similar drug.

By Cadila Pharmaceutical i.e., Respondent

  1. Cadila Pharmaceutical contented that the prefix “FALCI” of their mark “FALCITAB” was taken from the disease ‘Falcipharum’, and it is common practice in pharmaceutical industry to name a drug after the disease it is claiming to cure.
  2. They also contended that the said drug in dispute is ‘Schedule L’ drug and not ‘Schedule H’ drug, which means that the drug would not be sold in retail chemist shop, it will only be sold to hospitals and clinics. As a result, there could not be remote chance of confusion and deception.

Issue

The core issue involved in this case was whether the mark of Cadila Pharmaceutical i.e., “FALCITAB” is similar to the mark of Cadila Healthcare i.e., “FALCIGO”?

Proceedings

Before Trial Court

The injunction application of Cadila Healthcare was dismissed by The Extra Assistance Judge, Vadodara. It was observed that the two drugs “FALCIGO” and “FALCITAB” differed in appearance and formulation, and they can only be sold to hospitals and clinics which diminishes the chance of confusion and deception compared to when these are to be sold to individuals.

Before High Court

An appeal was preferred before High Court against the decision of Trial Court, Hon’ble High Court affirmed with the decision of Trial Court and after examining various aspects held that the likelihood of confusion caused to an unwary consumer is not there and there is little chance of passing off.

Before Supreme Court 

At the forefront Hon’ble Supreme Court said that, through this judgement it does not tend to interfere with the decision and findings of lower court, the judgement is passed only to set out principles which are to be kept in mind while dealing with issue of passing off especially in medical products.

Hon’ble Supreme Court examined in detail various precedents of domestic and foreign jurisdictions, and it was observed by Supreme Court that howsoever detailed and minute the foreign precedents are, the same could not be made applicable to India where there is no common language, where large percentage of people are not literate and only few people know English language. Purchasers of India are to be kept in mind before any pronouncement as the confusion of the identity of the product itself could have serious effects on the public health.

It was further observed by court that even though the drugs in question are ‘Schedule L’ drugs which are sold only to hospitals and clinics, it does not rule out the possibility of confusion among professionals dispensing medicines.

And lastly, Hon’ble Supreme Court laid out various factors to be considered in case of passing off, for deciding question of deceptive similarity which are as follows:

  1. “The nature of the marks i.e., whether the marks are word marks or label marks or composite marks, i.e., both words and label works.
  2. The degree of resemblances between the marks, phonetically similar and hence similar in idea.
  3. The nature of the goods in respect of which they are used as trademarks.
  4. The similarity in the nature, character and performance of the goods of the rival traders.
  5. The class of purchasers who are likely to buy the goods bearing the marks they require; on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
  6. The mode of purchasing the goods or placing orders for the goods; and
  7. Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks”.

Conclusion

Through this judgement, Supreme Court gave a meticulous interpretation of various precedents and laid out factors to be considered while dealing with infringement or passing off suits, especially when it involves medicinal products. It was laid out by the court that before granting permission to manufacture a drug, the applicant has to satisfy Drug Controller General that there will be no confusion or deception in market by using a certain brand name. Though Hon’ble Supreme Court did not interfere with the decision of the lower court and gave them directions for expeditious disposal of suit, it however laid down the principles and factors which are to be kept in mind while adjudicating upon passing off suits and for deciding question of deceptive similarity.

Dhruv Dangayach,  Ramaiah College of Law

Please contact us at info@origiin.com to know more about our services (Patent, Trademark, Copyright, Contract, IP Licensing, M&A of companies)

Subscribe to YouTube Channel HERE

Join Linkedin Group: Innovation & IPR

Whatsapp: +91 74838 06607

 

Novartis AG v. Union of India & others, AIR 2013 SC 1311, [2013]

Apr 22, 2021 | Indian Patents Act 1970, IPR & Business

This is a landmark case in the history of Indian patent system. On April 2013, the Supreme Court of India confirmed the rejection by the Indian Patent Office of a patent application (Patent number: 1602/MAS/1998) filed by Novartis International AG (hereinafter referred as Novartis) a Swiss drug maker. It was regarding beta crystalline form of imatinib mesylate and is the most stable form which Novartis formulated into an anti-cancer drug “Gleevec”. The Supreme Court (hereinafter referred as “the Court”) considered that Gleevec did not qualify as a patentable “invention” under Section 3(d) of the Indian Patents Act. Brief facts of the case are as follows:

  1. Novartis, one of the largest international pharmaceutical company filed an application as per the TRIPS agreement before the Madras Indian Patent Office in 1998 for grant of a patent for an anticancer medicament ‘Gleevec’.
  2. This drug was used against “Myeloid Leukaemia” and “Gastrointestial Stromal Tumours”, made from beta crystalline form of “Imatinib mesylate”.
  3. The Indian Patent Office rejected this application in 2006 based inter alia on the failure by Novartis to show “significantly enhanced efficacy” of the beta crystalline form over its original salt as required under Section 3(d) of the Indian Patents Act, 1970.
  4. The said drug did not exhibit any major changes in the therapeutic efficacy over its pre-existing form.
  5. In 2006, Novartis filed 2 writ petitions in Madras High Court under Article 226 of the Constitution of India. The first appeal stated that Section 3(d) of Patents Act, 1970 is unconstitutional and second appeal was against the order passed by Madras Patent Office.
  6. The Madras High Court held that the alleged offending provision is not a violation of Article 14 of the Constitution of India and transferred the case to the Intellectual Property Appellate Board [IPAB] in the year 2007.
  7. The IPAB overturned the patent controller’s findings on novelty and inventive step of beta crystalline form. However, Novartis alleged invention did not satisfy the test of Section 3(d). It is to prevent ever-greening of already patented product. Hence, IPAB rejected the appeal and refused to grant patent to Novartis.

Section 3(d) of the Indian Patent Act, 1970 is as below:

“the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant, is not patentable.”

 After this, Novartis filed a Special Leave Petition before the Supreme Court of India in 2009 against the order passed by IPAB.

Issues

The main issues before the Hon’ble Court were:

  1. Whether the invention was inconsistent with respect to Section 3(d) of the Indian Patent Act, 1970?
  2. What according to Section 3(d) of Patents Act, 1970 the meaning of Efficacy and a known substance?
  3. Whether the claim by Novartis i.e. Beta crystalline form of “imatinib mesylate” more efficacious than the derivative form of “imatinib mesylate” is valid?

Arguments by the parties

  1. By Plaintiff i.e., Novartis
  2. Novartis contented that there is no clarity as to what constitutes “enhancement of efficacy” and “significant enhancement of efficacy” as required; therefore, the law is vague and led itself to arbitrary decision.
  3. Novartis challenged the IPAB’s finding on Section 3(d). They argued that this provision related to “discoveries” doesn’t apply to its patent application which satisfies the criteria of novelty, inventive step and industrial application and is an “invention” under Section 2(1) (j) of the Patents Act, 1970.
  4. Furthermore, they argued that the IPAB’s holding paid no attention to the fact that they held the beta-crystalline is an invention and passed the novelty test and then they applied Section 3(d), relating to discoveries and refused to grant a patent to Novartis invention.
  5. Disputing the IPAB’s holding that the term “efficacy” means therapeutic efficacy, they argued that one term in the statute could not have two different meanings. It was only the beta crystalline form of imatinib mesylate that had therapeutic effect unlike the original forms.
  6. They pleaded that improved biodiversity and thermodynamic stability are properties that improved efficacy and the beta crystalline form of imatinib mesylate manifested both these properties.
  7. Section 3(d) could only be applied for substance already in existence and urged that such efficacy had never been established for imatinib, it is not possible to demonstrate enhanced efficacy of the beta-crystalline form of imatinib mesylate.

By Defendants i.e., Union of India & Ors.

Various arguments were brought before the Apex Court but the focus was on proving that:

  1. Beta crystalline form of imatinib mesylate is neither new (novel) nor is it non-obvious due to publications about imatinib mesylate in Cancer Research and Nature in 1996, and that the efficacy as referred in the section 3(d) should be interpreted as therapeutic efficacy and not just physical efficacy.
  2. The respondents also quoted extensively from the Doha Declaration, they took excerpts from parliamentary debates, various petitions by NGOs, WHO, etc. to highlight the public policy dimension of the arguments relating to easy affordability and availability of life saving drugs.

Judgement

Court relying on various judgements held that:

“The Hon’ble Supreme Court held that imatinib mesylate lacked novelty, as it was already included in the claims to the original substance imatinib. The court analyzed a number of scientific articles that describe not only the free base i.e. imatinib but also its salt form i.e. imatinib mesylate. Court also stated that a patent holder cannot claim a wide scope of an existing patent in infringement litigation but then claim a narrow scope of the same patent in the context of examining novelty of a salt derivative. The court accepted the IPAB’s views that the beta crystalline form could not be considered novel, it did not meet the requirement of enhanced efficacy under Section 3(d) of the Patents Act and therefore constituted no patentable “invention”. The term efficacy refers to “therapeutic efficacy”. The true intention to enact section 3(d) was to prevent the concept of ever-greening of patents and thus without fulfilling the test in Section 3(d) no patent can be granted. It was also held that improved bioavailability does not necessarily result in improved therapeutic efficacy. Novartis claimed 30% increase in bio-availability which was held insufficient. This patent doesn’t bring out any improved efficacy in beta form. In this case, the Court emphasized that Novartis had failed to submit any evidence to show that increased bioavailability of the beta crystalline form actually increased the therapeutic effect of the substance on the human body. The court further said that Section 2(1) (j) defines “invention” to mean, “A new product, but the new product in chemicals and especially pharmaceuticals may not necessarily mean something altogether new or completely unfamiliar or strange or not existing before. It may mean something “different from a recent previous”. Thus, in view of the findings it was held that the beta crystalline form of imatinib mesylate, failed the test of invention and patentability.”

The Supreme Court made it clear that India is a developing country and medicines should be available at an affordable price to safeguard the lives and protect the interests of billions of people. A reasonable and liberal approach must be followed to grant patents. Hence, the appeal filed by Novartis is dismissed. The judgement against ever greening of pharmaceutical patents garnered international support from various organizations.

By: Runjhun Sharma, School of Law, Mody University

Please contact us at info@origiin.com to know more about our services (Patent, Trademark, Copyright, Contract, IP Licensing, M&A of companies)

Subscribe to YouTube Channel HERE

Join Linkedin Group: Innovation & IPR

Whatsapp: +91 74838 06607

 

 

F.Hoffman-La Roche Limited and Another’s v. Cipla Limited {RFA (OS) 92/2012 AND RFA (OS) 103/2012}

Apr 22, 2021 | Indian Patents Act 1970, IPR & Business

The landmark case took place between F.Hoffman-La Roche Ltd. (hereinafter referred as Roche), a Swiss Multinational Health Care Company & Pfizer, a US based Company on one hand and Cipla Ltd. (hereinafter referred as Cipla), an Indian Multinational Pharmaceutical Company on the other. Pfizer and Pfizer Products, Inc. as joint applicants were granted a patent [Patent Number 196774] for a drug named ‘Erlotinib’. The patented item was introduced into the Indian market by Roche in the year 2006 under the brand name ‘Tarceva’. Meanwhile Cipla claimed of selling generic version of ‘Erlotinib’ under the brand name ‘Erlocip’.

Brief facts of the case are as follows:

  1. In February 2007, Roche claimed to have a patent for ‘Erlotinib’ and sold the drug under the brand name ‘Tarceva’. In January 2008, Cipla intended to launch a generic version of the drug. This led to infringement between Roche and Cipla.
  2. The dispute between the parties was based on the compound commonly known as “Erlotinib Hydrochloride”.
  3. In 2008, Roche’s plea in the Delhi High Court for grant of an interim injunction to restrain Cipla to manufacture, offer of sale, sell and export of the drug ‘Erlotinib’ was rejected.
  4. On appeal the bench upheld the decision and said that Roche failed to build up a prime facie case of infringement. Thus, the appeal was dismissed with costs at Rs 5 lakhs to be paid to Cipla by Roche.
  5. After this, the SLP filed by Roche was also dismissed.
  6. After the final decision of Single Judge by Delhi HC it was held that Roche didn’t had sufficient evidence to prove that Cipla’s brand ‘Erlocip’ infrined it patent ie. ‘Erlotinib’.
  7. On appeal, the matter was decided by a Division Bench of Delhi High Court.

Issues

The main issues before the Hon’ble Court were:

  1. Whether Cipla’s product, Erlocip which is Polymorph B of the compound ‘Erlotinib’ infringes the Roche’s patented compound ‘Erlotinib’.
  2. Whether Roche’s patented compound ‘Erlotinib’ is a valid patent?

Arguments by the parties

  1. By Plaintiff i.e., Roche
  2. They claimed that ‘Erlotinib’ is a novel compound and is not a salt, polymorph, etc of any known substance. Hence, Section 3(d) of the Patents Act, 1970 is not applicable.
  3. They argued that ‘Erlocip’ by Cipla is “Erlotinib Hydrochloride” and claimed that the manufacture of Polymorph B of this compound is in itself a sufficient infringement of Roche’s patent.
  4. Furthermore, they argued that if a patentee’s rights were not respected then it would be contrary to the public interest of encouraging further research.
  5. They also contended that while determining the balance of convenience it is reasonable and appropriate to consider the use and accessibility of the invention in the territory, its manufacturing in India isn’t necessary.

 By Defendant i.e., Cipla

  1. Cipla argued that the patent was hit by Section 3(d) of the Patents Act, 1970 as ‘Erlotinib’ was a derivative of a known patent ‘Quinazoline’. They alleged that Roche had not proved that there was “any improved efficacy of the said drug”.
  2. They further argued that Roche’s product was highly priced. Roche’s tablets were priced around Rs 4800 whereas; Cipla’s tablets cost aound Rs 1600. They contended that this was a matter of life saving drugs therefore it should be made at an affordable and cheaper price to the public at large.
  3. Furthermore, they argued that Roche didn’t file any data to demonstrate that ‘Erlotinib Hydrochloride’ in patent had a higher therapeutic efficacy.
  4. They defended that “Erlotinib Hydrochloride” was a mixture of two polymorphs A and B and to get the claimed compound it was necessary to separate both the polymorphs. This defeats the inventive step of the alleged invention and this material information was withheld by Roche.

 Judgement

Court relying on various judgements held that:

“In 2015, the Hon’ble Division Bench of Delhi High Court held that Cipla’s product ‘Erlocip’, which is claimed to be a polymorph B form of the compound ‘Erlotinib’, infringes Roche’ patent and affirmed its validity as well. It set aside the Single Judge decision dismissing the suit for injunction filed by Roche. The bench further stated that this compound may exist in various polymorphic structures; however, any such structures will be subsumed within this patent. Therefore, ‘Erlocip’ (Polymorph B) by Cipla will infringe this patent. The judgement laid down several guidelines and steps that should be followed in every infringement of patent suit. It was said that to pass the correct test, Cipla must map its product against Roche’s patent claims. In order to test the obviousness the first step is to see who is a Person of Ordinary Skilled in the Art (POSA) and its characteristics. Further, Polymorph B was rejected because it didn’t show enhanced therapeutic efficacy. The charges alleged by the applicant are in the physical properties and not in the therapeutic efficacy. This amounts to ever greening tendency which has been prohibited by Section 3(d) of the Patents Act, 1970. In the present case the drug was a life saving drug and affects people at large. It was manufactured in India, at a comparatively lower price. The Court further said that Cipla has been unsuccessful in satisfying the tests laid down to establish prime facie that the patent was obvious. Subsequently the Court directed Cipla to render accounts concerning the manufacture and sale of ‘Erlocip’ for the calculation of damages. It however, didn’t grant a permanent injunction against Cipla.”

Cipla then filed a SLP against the decision, which was admitted by the Apex Court in the year 2016 the Court directed to appoint a technical expert and adjourned the matter. After a series of legal proceedings, the Pharma majors finally reached a settlement, withdrawing all pending litigation, including the SLP. This settlement possibly marks the close of the first Pharma patent case in India in the post Trade-Related Aspects of Intellectual Property Rights (TRIPS) era.

By: Runjhun Sharma, School of Law, Mody University

Please contact us at info@origiin.com to know more about our services (Patent, Trademark, Copyright, Contract, IP Licensing, M&A of companies)

Subscribe to YouTube Channel HERE

Join Linkedin Group: Innovation & IPR

Whatsapp: +91 74838 06607

 

Astra-IDL Limited vs. TTK Pharma Limited {AIR 1992 Bom 35}

Apr 22, 2021 | Indian Patents Act 1970, IPR & Business

In this case, Astra- IDL Limited (hereinafter referred to as ‘Astra’) filed the suit for permanent injunction against TTK Pharma Limited (hereinafter referred to as ‘TTK), to restrain TTK from infringing Astra’s mark “BETALOC”, which was registered under class 5 in respect of Pharmaceutical Preparation, by use of mark “BETALONG”. Astra herein claimed that TTK is using the mark which is deceptively similar to that of Astra’s, and TTK is passing off their goods as that of Astra’s. Brief facts of the case are as follows:

  1. That Astra is a public limited company and is carrying on business of manufacture and sale of medicinal products. Astra got registration of their mark i.e., “BETALOC” on 16th June, 1977 in class 5 of Trade Mark Merchandise Marks Act, 1958 (hereinafter referred to as Act). And since then, they have been using the said mark in respect of drug for the treatment of hypertension, angina pectoris, arrythanias etc.
  2. That Astra in month of November 1987 got knowledge of the mark “BETALONG” which was also used by TTK in respect of drug for treatment of hypertension, angina pectoris, arrythanias, etc.
  • Subsequently, Astra served a cease-and-desist notice dated 18th November 1987 upon TTK. The said letter was duly replied, wherein TTK refused to oblige by the requisition of cease-and-desist notice. Hence, the suit was filed by Astra claiming that TTK has adopted the mark “BETALONG” with dishonest intent and has infringed the mark “BETALOC” registered in the name of Astra.

Arguments

By Astra i.e., Plaintiff

That Astra is carrying business with the registered mark “BETALOC” since 1977 and by the virtue of such registration and continuous usage they have acquired proprietary right in the mark “BETALOC” and hence they are exclusively entitled to use the mark in class 5 of the Act.

  1. That even after serving cease-and-desist notice TTK has been using the mark “BETALONG” which is deceptively similar to their mark. And by such usage TTK is taking the advantage of reputation and goodwill acquired by Astra, by passing-off the goods as that of Astra’s.
  • That the contentions of TTK that drugs being sold through chemist on prescription of medical practitioner diminishes the chances of confusion is not true. Relying on precedents Ranbaxy Laboratories Ltd. vs. Dua Pharmaceuticals Pvt. Ltd., {1988 (8) PTC 273 (Del)}; and Burroughs Welcome (India) Ltd. vs. G. K. Sharma and King Scientific Research Centre, {(1989) 14 IPLR 60} it was contended that although drugs are dispensed on prescription, marks being deceptively similar can cause confusion.

By TTK i.e., Defendants

That the product manufactured by TTK when taken in appropriate doses blocks the effect of ‘Catecholomines’ (certain type of hormone which causes hypertension) acting on ‘beta receptors’ (located in heart) and such blocking effect is longer than other drugs. And therefore, in the mark “BETALONG”, ‘BETA’ is taken from the ‘beta receptors’ and ‘LONG’ represents longer duration for which the drug blocks ‘Catecholomines’; and such mark is coined without any reference to Astra’s mark “BETALOC”.

  1. That due to such abovementioned distinguishing feature of TTK’s drug it is well recognised among medical practitioners and such practitioners are not likely to get confused by alleged similarity between Astra’s mark and TTK’s mark.
  • That the drugs in question are ‘Schedule-H’ drugs which can only be sold by chemist holding license on prescription of registered medical practitioner, the chances of confusion are substantially reduced. For such reliance was put on M/s. Johann A. Wulfing v. Chemical Industrial and Pharmaceutical Laboratories Ltd. {AIR1984Bom281}; and Sterwin A.G. v. Brocades (Great Britain) Ltd. {1979 RPC 481}.
  1. That the marks in question have to be analysed in detail. It was contented that the letters ‘LOC’ in Astra’s mark, “BETALOC”, do not convey any meaning and when taken together they are short, terse and sounds soft. Whereas the word ‘long’ in TTK’s mark has specific meaning, lengthy duration and pronunciation is lengthened and not terse. Therefore, the two marks by no means can be called deceptively similar.

Issue

The core issue involved in this case was whether the mark of TTK i.e., “BETALONG” is deceptively similar to the mark of Astra i.e., “BETALOC”.

Judgement

Hon’ble High Court of Bombay, relying on the decision of Supreme Court in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd., [1960]1SCR968 observed that mark has to be observed in totality to decide upon question of deceptive similarity. It was observed by the court that:

“In the instant case in deciding whether the word ‘Betalong’ is deceptively similar to the word ‘Betaloc’, each of the two words must, therefore, be taken as a whole word. The words are so similar that there is reasonable probability of confusion between the words both from the visual and phonetic point of view. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop. As observed above in the instant case, apart from the syllable ‘ng’ in defendants’ mark, the two marks are identical”.

Further, it was observed by court that it cannot close its eyes to the factual reality that, in India the scheduled drugs which were supposed to be sold on prescription were sold without prescription in India, which reduced the weight to be given to this factor when evaluating deceptive similarity. The two marks in question are so deceptively similar that it “outweighs the weightage to be given to the factor that the goods are scheduled drugs.”

Thus, it was held that the mark of TTK i.e., ‘BETALONG’ was phonetically, visually and structurally similar to the mark of Astra i.e., ‘BETALOC’

By: Dhruv Dangayach, Ramaiah College of Law

Please contact us at info@origiin.com to know more about our services (Patent, Trademark, Copyright, Contract, IP Licensing, M&A of companies)

Subscribe to YouTube Channel HERE

Join Linkedin Group: Innovation & IPR

Whatsapp: +91 74838 06607

 

Glenmark Pharmaceuticals Ltd. Vs. Curetech Skincare and Galpha Laboratories Ltd. {2018(76) PTC114(Bom)}

Feb 23, 2021 | Indian Patents Act 1970, IPR & Business

In this case of trademark infringement, an exemplary amount of Rs. 1.5 crore was awarded by the Hon’ble Bombay High Court in favour of Glenmark Pharmaceuticals Ltd. (hereinafter referred to as ‘Glenmark’). Galpha Laboratories Ltd. (hereinafter referred to as Galpha) was found to be ‘habitual offender’ for trademark and copyright infringement. What makes this case interesting is, firstly the Galpha’s decision to not contend the suit and secondly the exemplary damages awarded by Hon’ble Bombay High Court. Brief Facts of the case are as follows:

  1. Galpha’s mark “CLODID-D” was alleged to be infringing packaging and trade dress of Glenmark’s mark “CANDID-B”. It was further alleged that Galpha has copied word mark, art-work, colour scheme, font style, manner of writing, trade dress of the Glenmark’s product “CANDID-B”.
  2. With regards to Curetech Skincare, the position was made clear that they were only the contract manufacturer of the product of Galpha. The copy of contract manufacturing agreement was also supplied by Curetech according to which art-work, labels and marks were provided by the Galpha, and they are not claiming any right over the disputed mark.
  3. The main dispute pertaining to infringement of trademark of Glenmark by Galpha was contended before the court.

Arguments

By Glenmark i.e., Plaintiff:

  1. That this is not the first time Galpha is infringing their trademarks, an earlier cease and desist notice was cited by Glenmark, wherein Galpha was asked to stop infringing upon the trademark of Glenmark, “ASCODIL”, by using deceptively similar mark “ASCORIL”, to which an unconditional apology and undertaking was provided by Galpha.
  2. That apart from copying Glenmark’s trademark, Galpha has copied marks of various other pharmaceutical companies for which suits are pending. Further in the case of Win-Medicare Pvt. Ltd. Vs. Galpha Laboratories Ltd. & Ors {2016 (65) PTC 506 (Del)}, Delhi High Court has observed that Galpha is a ‘habitual offender’.
  3. That apart from infringement, there are several other instances wherein medical products of Galpha were found to be “Not of standard quality/Spurious” by Central Drugs Standard Control Organization, various articles were cited wherein it was revealed that Galpha has violated standards set out by Food and Drug Administration (FDA).
  4. That on basis of such repeated infringement and violation of standards a stricter punishment has to be awarded upon Galpha to deter them from any such illicit acts in future

By Galpha i.e., Defendant:

  1. Galpha, surprisingly, admitted to all the allegations put forth by Glenmark and contented that they should have been more precautious and diligent before adopting and using the trademark and that they are willing to submit themselves to the decree of court.

Issue

Whether Galpha by use of mark “CLODID-B” is infringing upon mark of Glenmark, “CANDID-B”?

Judgement

The marks in dispute were presented before the court and the court took notice that the mark of Galpha, “COLDID-B” is nothing but a direct copy of mark of Glenmark, “CANDID-B”. It was observed by court that “Drugs are not sweets. Pharmaceutical companies which provide medicines for health of the consumers have a special duty of care towards them. These companies, in fact, have a greater responsibility towards the general public”. Strict approach was followed by Bombay High Court, and based on the evidences and documents produced by Glenmark, the court observed that there is no doubt that Galpha is a habitual offender with a set mode of operation of copying brands of other to make profits.

Further it was observed that Galpha has copied trade dress, colour scheme, art-work, font style and even manner of writing of Glenmark’s product, and keeping in mind the strictness to be followed in medical products; habitual disregard by Galpha to rights of others; and keeping public interest at priority, Hon’ble High Court of Bombay imposed Rs. 1,50,00,000/- as the exemplary costs on the Galpha.

Thus, by the documents and evidences produced before the court, it was observed that Galpha is not only a habitual infringer but also habitual offender of law, medicine being directly related to public health needs more scrutiny and hence, Galpha cannot escape its liability by pleading that they accept all the charges and submit themselves to the suit. They have to be responsible for their actions and Rs. 1.5 crore was awarded as an exemplary damage to deter Galpha from any infringement and violation in future. Court while passing such judgement relied not only on Trade Marks Act but also on general principle of law.

By: Dhruv Dangayach, Ramaiah College of Law

Please contact us at info@origiin.com to know more about our services (Patent, Trademark, Copyright, Contract, IP Licensing, M&A of companies)

Subscribe to YouTube Channel HERE

Join Linkedin Group: Innovation & IPR

Whatsapp: +91 74838 06607

 

Home

Menu

Contact