Public health uppermost in pharma TM infringement

By Manisha Singh and Simran Bhullar, LexOrbis
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Given the impact of the pharmaceutical industry on public health and safety, courts apply severe measures when dealing with pharmaceutical trademark infringement. A strict approach is taken when assessing whether the similarities of marks will adversely affect the public at large. Pharmaceutical products may have life altering repercussions. The courts therefore take into consideration the smallest of details in deciding whether an infringement has occurred. A deceptively similar medical product may endanger the lives of consumers and put the health and safety of the public at large at risk.

Manisha Singh, LexOrbis, Public health uppermost in pharma TM infringement
Manisha Singh
Partner
LexOrbis

In the recent case of Intas Pharmaceuticals Private Limited v Intra Life Private Limited and Ors., the Delhi High Court granted a permanent injunction against the defendants, restraining them from using the plaintiff’s registered trademark, Looz. The case was brought against three defendants, the first of which settled the matter amicably with the plaintiff. This defendant acknowledged the vested and proprietary rights of the plaintiff in the mark and its variants, including priority rights in adoption, usage in trade and the validity and subsistence of the trademark registrations. The court approved the terms of the settlement and ordered that, since the matter was settled with the first defendant in the early stages of the case, the plaintiff was entitled to a refund of 50% of the court fees it had paid.

However, the other two defendants neither appeared in court nor were represented, even though counsel had briefly appeared on their behalf the day before, saying that the defendants would be applying to set aside an existing interim injunction made in their absence and applying for a further adjournment. Counsel had stated that the basis for discharging the interim injunction was that the defendants were willing to settle the matter. The case against the second and third defendants proceeded in their absence. The court held that the defendants chose to avoid the proceedings despite good service of notices to appear. Further, the defendants submitted no material or justification for the use of the infringing mark on their products.

Simran Bhullar, LexOrbis, Public health uppermost in pharma TM infringement
Simran Bhullar
Senior Associate
LexOrbis

These defendants were using the mark, Loozout, on their pharmaceutical products, which was deceptively similar to the plaintiff’s trademark, Looz. The defendants, their assignees, agents and all others working on their behalf were permanently stopped from manufacturing, selling, offering for sale, advertising and promoting the products using the mark, Loozout, or the mark, Looz, with any other prefix or suffix. The defendants were further restrained from manufacturing or selling any product under any other mark identical or deceptively similar to the registered mark of the plaintiff. In addition, the court ordered the defendants to pay costs to the plaintiff of INR200,000 (USD2,500).

It is of interest that under the Trade Marks Act, 1999, section 103, trademark infringement is punishable with imprisonment for not less than six months but no longer than three years and a fine of not less than INR50,000 but no more than INR200,000. The court may, for special reasons that must be set out in its judgment, impose a sentence of imprisonment of less than six months and a fine of less than INR50,000. Here, the court ordered costs against the absent defendants that equalled the maximum fine a criminal court could have imposed. The court gave no indication that the plaintiff had submitted an estimated level of costs, let alone a detailed summary. The court merely referenced a claim for costs set out in the claim. It appears that the court, in awarding costs, took the maximum criminal penalty as a guide. Whether that approach would survive an appeal is the interesting aspect of a short judgment, but the court clearly intended the order to reflect the seriousness of infringing pharmaceutical trademarks and the possible repercussions on the health and safety of consumers.

The refund of 50% of the plaintiff’s court fee is an incentive to litigants to settle matters out of court, in this case under section 16A of the Court Fees Act, 1870 as inserted by the Court Fees (Delhi Amendment) Act, 2010. Public interest litigation was filed on 7 July 2022 challenging the 2010 act’s constitutionality.

Manisha Singh is a partner and Simran Bhullar is a senior associate at LexOrbis.

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