Glenmark Pharmaceuticals Ltd. v. Curetech Skincare and Galpha Laboratories Ltd.
Court: High Court of Bombay
Case No: Notice of Motion (L) No. 1890 of 2018 in COMIP (L) NO. 1063 of 2018
Order dated: 28thAugust, 2018
Facts of the case:
The plaintiff, is a Mumbai-based Generic Drug Manufacturer company. The Plaintiff is known for its products under the trademark CANDID- B which is an anti-fungal cream and widely available in the Indian market. It was alleged that Defendant No. 2 had adopted trademark CLODID-B and also copied the word mark, artwork, color scheme, and trade dress of the Plaintiff. Defendant’s word mark, Colour Scheme, Art work, packaging and trade dressing were deceptively similar and likely to cause confusion. Defendant No. 1 and contract manufacturer of Defendant No. 2 manufactured products with the art-work, labels and the mark provided by the Defendant No. 2.
Arguments:
The Defendant No. 2 contented that impugned trade mark was adopted by the Defendant No. 2 by mistake and they have not been involved in any other infringing activities. On the other hands, the Plaintiff submitted that Defendant No. 2 had previously sent a cease and desist notice to Galpha Laboratories for using the trademark ASCODIL and for infringing their registered trademark ASCORIL. In this case, the Defendant No.2 had tendered a written unconditional apology and given an undertaking that they would not infringe the Plaintiff’s trademark in the future.
The Plaintiff cited the case of Win-Medicare Pvt. Ltd. v Galpha Laboratories Pvt. Ltd. & Ors., wherein the Delhi High Court had in January 2016, categorically held Defendant No. 2 to be a ‘habitual infringer’.
Judgment:
This judgment of this case has gained its notable significance for the quantum of damages and the rationale of the court in awarding such damages. The court held that the Defendant No. 2 had infringed the intellectual property rights of the Plaintiff and chastised the practices adopted by the Defendant No. 2 and imposed exemplary damages. Justice Kathawalla observed that-
“Drugs are not sweets. Pharmaceutical companies which provide medicines for health of the consumers have a special duty of care towards them. These companies, in fact, have a greater responsibility towards the general public. However, nowadays, the corporate and financial goals of such companies cloud the decision of its executives whose decisions are incentivized by profits, more often than not, at the cost of public health. This case is a perfect example of just that.”
Firstly, the Court dealt with the formal written apology and undertaking given by the Defendant No.2 in 2004 to the Plaintiff for agreeing not to use the mark ‘ASCODIL’. The Court held that “After tendering a written apology and undertaking, one is expected to be careful and cautious while conducting its business, but the actions of the Defendant No.2 are far from being careful or cautious and to say, at the least, are shocking and appalling.”
Further, the Court dealt with the record presented by the Plaintiff proving that the Defendant No.2 had been infringing the trademarks of other pharmaceutical companies. The Hon’ble Mr. Justice S.J Kathawalla in this regard held that “There is, therefore, no doubt in my mind that the Defendant No.2 is a habitual offender with a set modus operandi of copying brands of other companies to make profits.”
Lastly, the Court dealt with the various documents presented before it, to point out the violations of the FDA rules by Galpha Laboratories. The products of the Defendant have been held to be “Not of Standard Quality/ Spurious/ Adulterated/ Misbranded”. The Court in this regard held that “It is clear that the Defendant No.2 is not only indulging in infringing activities by repeatedly copying brands of other companies but also appears to be in complete violation of the FDA regulations.
The court imposed exemplary damages of ₹1.5 crores on the Defendant No. 2 and upon the request of the Plaintiff, these damages were donated to the Kerala Chief Ministers Distress Fund. The Court ensured that the Directors of the company personally undertook the duty of withdrawing CLODID-B products from the market and the manufacturing permit was to be withdrawn.
