In the first half of 2021, as India was battling a fierce second wave of Coronavirus infections, many pharmaceutical companies released new products to treat the symptoms and health problems caused by the virus. In the middle of the ravaging pandemic, a dispute arose between two pharmaceutical giants on an alleged trademark infringement, which pitted the protection of trademarks against the protection of lives.
This is the case of Sun Pharmaceutical Industries Limited v Cipla Limited.
The defendants in the original suit (Sun Pharmaceutical Industries Ltd.) were sued by the plaintiffs (Cipla Ltd.) for allegedly infringing their registered trademark and copyright by naming a product on deceptively similar lines and imitating the packaging and labels. The Plaintiffs were the manufacturers of a solution called ‘Duolin Respules’ for treating patients with respiratory ailments. The Defendants named their product ‘Duoz Respules’ and imitated the colour label and the packaging design, which became highly similar to that of the one made by Cipla.
The defendants and any individuals acting on their behalf or with their consent were the targets of a lawsuit brought before the Madras High Court, asking for a permanent injunction to stop the alleged infringement of the registered trademark ‘Respules’ owned by Cipla, as well as the copyright over the colour label and packaging design.
The lawsuit argued that because the Plaintiff owns the trademark ‘Respule’, the Defendant must refrain from creating, packaging, trading, or otherwise transacting in, or advertising, any medical commodities or other products of any kind bearing that mark.
The use of packaging that was identical to, or misleadingly similar to, the trademark used by the Plaintiff for ‘Duolin Respules’ and ‘Budesonide Respules’, either alone or in combination with the mark, was also said to result in the Defendant passing off their goods as those of the Plaintiff.
The Court passed an order of interim injunction upon perusal of the facts and the affidavits and restrained Sun Pharma from marketing its product with the identical name, colour, and packaging.
Aggrieved by the order, Sun Pharma filed three counter applications to vacate the interim order. The plea stated that the applicants have a large stock of the ‘Duoz Respules’ product, and there was a massive demand for the same due to the ongoing pandemic. This product would be beneficial in helping people by relieving respiratory problems. They also stated that the product had an expiry date of 1 year from the date of manufacturing and that an interim injunction would adversely affect the treatment of medical emergencies during the pandemic. Sun Pharma also pleaded with the Court to allow them to sell the existing stock under a different packaging in the public interest.
The Court considered the question as to whether a situation of urgency, as pleaded by the appellant, could be sufficient grounds for vacating an interim order of injunction.
The Court remarked that even if the applicants change the packaging of the product, it would still contain the label of ‘Respules’ which are deceptively similar to the ‘Budecort Respules’ and ‘Duolin Respules’ and ‘Respules’ owned by Cipla Ltd.
The Court observed the following in its judgement:
“If the Applicant/Defendant is allowed to release the products in the market, it will result in incalculable damage to the proprietary rights of the Respondent/Plaintiff and by permitting the Applicant/Defendant to sell the good it will be allowing dilution of the proprietary rights of the Respondent/Plaintiff.”
After due consideration, the Court refused to grant relief to the applicants. It held that the interim injunction would remain in force subject to the final decision of the suit. It also dismissed all the applications filed by the appellant to vacate the interim order.
It remarked emphatically that, “notwithstanding fact that the country is facing unprecedented medical emergency and possibly the patients suffering from covid systems may require the drugs manufactured both by the plaintiff and the defendant for treating patients them with respiratory ailments during these tough times the Court cannot allow a party to violate another person’s intellectual property rights viz copyright and trademark and remain a mute spectator, where there also is an attempt to pass-off the goods.”
Citation: Sun Pharmaceutical Industries Limited vs. Cipla Limited …, Decided by Madras High Court in May, 2021
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Student, Faculty of Law
University of Delhi