30 Aug 2021

SUN PHARMACEUTICAL INDUSTRIES LIMITED VS CIPLA LIMITED

ISSUE RAISED: The issue which came before this court was as to whether or not the ad-interim order granted in favour of the respondent/plaintiff should be vacated on the ground of urgency as pleaded by the applicant/defendant.

FACTS OF THE CASE: In this case, Cipla Limited, the respondent/plaintiff, filed a suit for permanent injunction before the madras high court. The suit was against sun pharmaceuticals industries limited, the applicant/defendant, as it infringed the respondent/plaintiff’s copyright and registered trademarks. The Applicant/Defendant imitated and substantially reproduced the artistic packaging, trade dress and labels of the Respondent/Plaintiff’s ‘BUDECORT RESPULES’ and ‘DUOLIN RESPULES’ which amounted to infringement of their copyright in artistic works. These were Budeonide Nebuliser Suspension BP, Levosal butamol and Ipratropium Bromide Respirator Solution which were used in treating patients with respiratory ailments. The Applicant/Defendant used the mark ‘RESPULE’ by calling their medicine “BudefexRespules” and “DuozRespules” which amounted to infringement of Plaintiff’s registered trademark. The Applicant/Defendant used packaging identical to Respondent/Plaintiff’s packaging for ‘Budesonide Respules’ and ‘DUOLIN LevosalbutamolRespules’ which amounted to passing off of their goods. The aforementioned acts of the Applicant/Defendant gave it an unfair advantage in the market and proved detrimental to the well-known trademark and copyright of the Respondent/Plaintiff. In this suit for permanent injunction against the Defendant’s infringing acts, the Respondent/Plaintiff filed three applications before the Court and prayed for the grant of an interim injunction against the Applicant/Defendant. The Court perused the averments made in the affidavit as well as the colour label of both the parties and opined that an identical colour label was adopted by the Applicant/Defendant imitating that of the Respondent/Plaintiff. Hence, the Court passed an order for an interim injunction on 30.04.2021, and restrained the Applicant from marketing its product with an identical colour, design, and wave design till 02.06.2021. [1]

Aggrieved by the same, the Applicant/Defendant on 03.04.2021, filed three counter applications to vacate the interim order granted. The plea for vacation was based on the fact that existing stock was of a huge amount and carried an expiry date of 1 year. The Applicant brought to the court’s notice that its drug was in demand because of the ongoing pandemic as they helped in relieving the Covid-19 symptoms, and it was directed to report to the Union Health Ministry about the stock and position. Applicant also prayed the Court to allow it to sell its existing stock with a thoroughly different packaging in the public interest, which the Respondent alleged was an attempt to infringe its intellectual property rights.

ANALYSIS: The question before the Court of setting aside the interim order so granted was mooted by the Applicant/Defendant on the ground of urgency by the Respondent and unfair dissolution of its rights. The Court analyzed the Applicant’s plea for urgency and said that it could not allow violation of the Respondent’s rights. Keeping in mind the fact that the country was facing a pandemic along with a huge demand for the drugs manufactured by both the parties, even then the Applicant should not be permitted to infringe Respondent’s rights just because it was a viable opportunity for them to make heavy profits. It went on to point out that the label and the trade dress had been copied by the Applicant to take advantage of the unprecedented demand in the market for those medicines and that it was intended to ride on the goodwill and reputation of the Respondent. The court noted that although it was open for the Applicants to recall and repack its products, no such concession could be granted in the name of the ongoing pandemic.

The Court observed that the Respondent had made out a prima facie case for continuance of the interim order as the balance of convenience continued to be in favour of the Respondent. The learned judge opined that no harm would be caused to the Applicant if the interim order was allowed till the disposal, but on the other hand, if they were allowed to release their products in the market, it would amount to incalculable damage to Respondent/Plaintiff’s proprietary rights. Additionally, under the aforementioned circumstances, the court dismissed the applications filed by the Applicant and reiterated its previous order.

The Court held that the interim injunction shall continue to remain in force subject to the final decision of the suit and dismissed the said applications filed by the Applicant for the vacation of the interim order.

 

 

[1]Dr Kalyan C. Kankanala, “CASE BRIEF : SUN PHARMACEUTICAL INDUSTRIES LIMITED VS CIPLA LIMITED” https://www.bananaip.com/ip-news-center/case-brief-sun-pharmaceuticals-industries-limited-vs-cipla-limited/ Last Visited on 25/08/2021 at 4.30 pm