Public health at the forefront in pharma TM infringement

gGiven the impact of the pharmaceutical industry on public health and safety, the courts apply harsh measures when it comes to pharmaceutical trademark infringement. A strict approach is taken when assessing whether the similarities of the marks will have an adverse effect on the general public. Pharmaceuticals can affect life. The courts therefore take into consideration the smallest details to determine whether a violation has occurred. A falsely similar medical product can endanger the lives of consumers and endanger the health and safety of the general public.

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 trademark, Looz. The case was brought against three defendants, the first of whom settled the case out of court with the plaintiff. This defendant recognized the acquired and proprietary rights of the plaintiff in the mark and its variants, including the priority rights of adoption, use in commerce and the validity and survival of the registrations of the mark. The court approved the terms of the settlement and ordered that since the case had been settled with the first defendant at the start of the case, the plaintiff was entitled to a refund of 50% of the legal costs he had paid .

However, the other two defendants did not appear in court or were represented, although a lawyer briefly appeared on their behalf the day before, saying the defendants were going to seek the quashing of an existing interim injunction. rendered in their absence and requesting a further adjournment. The attorney had said the basis for enforcing the interim injunction was that the defendants were willing to settle the case. The case against the second and third defendants took place in their absence. The court held that the defendants had chosen to avoid the proceedings despite the good service of the summonses. Furthermore, the defendants did not present any evidence or justification for the use of the infringing mark on their products.

Simran Bhullar, LexOrbis, Public health at the forefront in counterfeit pharma TM
Simran Bhular
Senior partner
LexOrbis

These defendants used the mark, Loozout, on their pharmaceutical products, which was deceptively similar to the plaintiff’s mark, Looz. Defendants, their assignees, agents, and all others working on their behalf were permanently barred from manufacturing, selling, offering for sale, advertising, and promoting the products using the Loozout trademark or the Looz trademark with any other prefix. or suffix. Defendants were further prohibited from manufacturing or selling any product under any other mark that is identical or deceptively similar to Plaintiff’s trademark. In addition, the court ordered the defendants to pay the plaintiff a fee of INR 200,000 (USD 2,500).

Interestingly, under Section 103 of the Trade Marks Act, 1999, infringement of a mark is punishable by imprisonment for not less than six months but not more than three years and a fine of not less than INR 50,000 but not more than INR 200,000. The court may, for special reasons to be stated in its judgment, impose a term of imprisonment of less than six months and a fine of less than INR 50,000. Here, the court ordered costs against the absent defendants that amounted to the maximum fine a criminal court could have imposed. The court gave no indication that the claimant had submitted an estimate of the level of costs, let alone a detailed summary. The tribunal merely referred to a request for costs set out in the application. It appears that the court, in awarding costs, took the maximum criminal penalty as a guide. Whether this 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 the infringement of pharmaceutical trademarks and the possible repercussions on health and consumer safety.

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

Manisha Singh is Partner and Simran Bhullar is Senior Partner at LexOrbis.

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