Passing off cannot be justified by urgency or public interest, rules Madras High Court

Public interest, health, and safety concerns lead the judiciary to act more cautiously in trademark infringement matters related to the pharmaceutical industry. Recently in the case of Sun Pharmaceuticals Industries Ltd. v. Cipla Ltd., the Madras High Court held that public interest and urgency cannot be claimed during Covid-19 as an excuse for passing off.

Background

The Plaintiff, in this case, sought a permanent injunction against the Defendant alleging that the Defendant had infringed the Plaintiff’s copyright and registered trademark by producing deceptively similar goods and supplying them in the market. The sensitivity of the matter was heightened given the ongoing Pandemic and the extremely high demand for these products. The Plaintiff also sought to restrain the Defendant from producing, packaging, trading, transacting, or advertising while dealing with medical commodities using the trademark “RESPULE”. Moreover, the Plaintiff alleged that their packaging and trade dress was infringed by the Defendant because it was deceptively similar to the Plaintiff’s “DUOLIN RESPULES” and “BUDESONIDE RESPULES” and hence the Defendant was passing off their products as that of the Plaintiff’s.

The Defendant’s Pleadings

On April 30, 2021, the Court had granted interim relief to the Plaintiff and the Defendant was restrained from marketing the goods in question until June 02, 2021. Aggrieved by this order, the Defendant, Sun Pharmaceuticals filed counter applications to quash the interim order passed by the Court and pleaded that since the company had stocked a large amount of supply and these products came with an expiry date, they be excused in the present case and be allowed to continue to sell their products in the market.

Moreover, it is noteworthy that the Defendant, in their pleading, claimed that during the Pandemic, these products were in high demand and were used for Covid-19 patients with severe symptoms. Therefore, the Defendant pleaded that they should be allowed to do so in the public interest and for the treatment of Covid-19 patients.

The Court’s Decision

With regards to the Defendant’s pleadings, the Court stated that “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 notwithstanding the fact that the country is facing an 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 them with respiratory ailments during these tough times.”

The Court went further to state that, “The plaintiff has made a prima facie case for continuance of Interim Order. In the light of the above discussion, the balance of convenience to continue the interim order granted by the court on 30.4.2021 still continues in favour of the plaintiff notwithstanding the fact that an attempt has been made by the defendant to nix the public interest due to the medical emergency in the country and world over with the rights of the plaintiff.” Furthermore, the Court also stated that the balance of convenience still favoured the Plaintiff and if the Defendant was allowed to release the products in the market, “it will result in incalculable damage to the proprietary rights of the plaintiff”.

Conclusion

The Court has set a precedent for these unprecedented times. The Court has clarified that medical urgency or public interest cannot be claimed to outwit litigation and cover-up opportunism. Thus, it can be observed from this decision that even pharmaceutical companies cannot evade infringement-related litigation by using Covid-19 as an excuse. In fact, this case also highlights the importance of intellectual property rights and more so during such times as well when it is easy for desperation to take over and the public to be misled into purchasing counterfeit products. Accuracy and authenticity are essential when it comes to medical commodities and the judiciary’s approach seems to be aligned with this thought process.