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.

Leave a Reply

Categories

Archives

  • November 2024
  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010