COVID-19 as an excuse for Passing Off: Rejected by Madras High Court

FACTUAL MATRIX:

COVID-19This matter was filed for the permanent injunction against the actions of Defendant, three applications were filed on behalf of Plaintiff, praying for granting interim relief. A Prima facie case was made out and hence an interim injunction was granted in favor of Plaintiff on April 30, 2021. As per this order, it constrained Defendant from marketing the goods in question up to June 02, 2021.

In response to these applications and courts order, three more counter applications were filed by Sun Pharma for quashing the interim order passed by this Court. Sun Pharma also contended that the company stocked up a large amount of the goods and these were medicinal supplies, which on average, have an expiration period of only one year, they prayed to get excused from this litigation and to be made available in the market for commercial supply.

SUBMISSIONS ON BEHALF OF PLAINTIFF:

The contentions made and presented on behalf of the plaintiff are as follows:

  1. That the plaintiff has an established market in the medical products viz Budecort Respules and Duolin Respules which are Budesonide Nebuliser Suspension BP and Levosalbutamol and Ipratropium Bromide Respirator Solution. The word Respules is a word that has been registered and has been in use since 2013.
  2. That these medicines were sold by the plaintiff with unique and colorful labels and packages and the adoption of a deceptively similar package by the defendant with trademark Budefex Respules and Duoz Respules was correctly ordered to be injuncted by this court in April 2021.
  3. That there is no urgency in vacating the interim order granted this court on April 2021 inasmuch as the attempt of the defendant was not only to infringe the copyright in the unique artistic work-trade dress in the label adopted for selling the above medicines but also an attempt to pass off their product and infringe the trademark of the plaintiff as that of the plaintiffs by causing confusion in the market.
  4. That by allowing the defendants to sell their product with the offensive trademark package/label, the plaintiff’s rights would be diluted and therefore prayed for dismissal of two applications of 2021.

SUBMISSIONS ON BEHALF OF THE DEFENDANTS:

The contentions made and presented on behalf of the defendants are as follows:

  1. that defendant has of manufactured products valued approximately Rs.1.5 crores and Rs.3.5 crores and may be allowed to be sold in the market and that the defendant would adopt a new package/label totally different from the one which has been currently used by them.
  2. that these products come with expiry date and therefore the defendant may be allowed to sell the existing stock as these medicines are required for treatment of patients with COVID-19 symptoms and defendant is one of the companies which is required to report the sale and stock position to the Union Health Ministry.

OBSERVATIONS & CONCLUSION:

The Hon’ble Court after referring to all the contentions presented made the following observations in the case:

That this court cannot allow any party to violate any person’s intellectual property rights and being a mute spectator where there is an attempt of passing off the goods with reference to the facts that the nation is facing an unprecedented medical emergency and possibly the patients suffering from Covid-19, the systems may require the drugs manufactured both by the parties of this suit for treating patients them with respiratory ailments during these tough times.

The Madras High Court after considering all the key factors while dealing with the contentions made by the plaintiff and the defendant held that no prejudice or harm would be caused to the defendant if the interim order is allowed to continue till the disposal of the instant suit. Also, if the defendant were allowed to release the products in the market, it will result in incalculable damage to the plaintiff’s proprietary rights and by permitting the defendant to sell the good it will be allowing dilution of the proprietary rights of the plaintiff. The previous interim passed in 2021 in the above suit shall continue to remain in force and will be subject to final outcome of the decision in the above suit.

AUTHORS COMMENTS:

Hon’ble Justice C. Saravanan has rightly held this order correctly by settling that even a medical necessity induced by COVID-19 cannot be a free pass for the pharmaceutical companies to infringe IP rights and justifying their actions under the name of public emergency.

Author: Nishant Thakur – a student of School of Law, University of Petroleum and Energy Studies (Dehradun),  currently an intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vidushi@khuranaandkhurana.com.

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