Delhi High Court takes tough stand on infringement of pharma marks

In Ranbaxy Laboratories Ltd v Crystal Pharmaceuticals (CS(OS) 104/2011, December 19 2012), the Delhi High Court has issued a permanent injunction restraining defendant Crystal Pharmaceuticals from using the trademark PENTAGESIC in relation to products similar to those of plaintiff Ranbaxy Laboratories Ltd (pharmaceutical products).

The suit was filed in 2010 and proceeded ex parte against the defendant, as it did not appear before the court despite the service of notice.

The plaintiff is a well-known pharmaceutical company and is the owner of the trademark PENTAGESIC, registered in Class 5 of the Nice Classification in respect of analgesic preparations. The drug sold by the plaintiff under the mark PENTAGESIC-MR (a combination of Diclofenac Sodium, Paracetamol and Chlorzoxazone) is used for the management of pain and fever, among other things.

The defendant is also engaged in the business of selling anti-inflammatory drugs - a combination of Paracetamol and Ibuprofen - under the mark PENTAGESIC.

The plaintiff filed suit against the defendant, seeking:

• a permanent injunction restraining the latter from manufacturing, marketing or selling any medicine under the mark PENTAGESIC or any other mark which is identical or deceptively similar to its registered trademark; and
• the delivery up of all the defendant's medicines, cartons, labels and unfinished products.

The plaintiff also claimed damages to the tune of Rs2 million.

The plaintiff submitted that the defendant had adopted the mark PENTAGESIC dishonestly with the intention of taking advantage of the goodwill and reputation of the plaintiff.  

The court found that there was a clear-cut case of infringement under Section 29(1) of the Trademarks Act 1999, which states that a registered trademark is infringed when a person who is neither the owner nor the registered user of the mark uses an identical or deceptively similar mark in relation to goods which are covered by the registered mark.

The court held that, in the present case, the defendant was using a mark that was identical to the registered trademark of the plaintiff in respect of the very goods that were sold by the plaintiff under the trademark PENTAGESIC-MR. The difference in the composition of the two drugs was an additional cause for concern, particularly in circumstances where the confusion between the two marks could result in a patient taking a drug that might be harmful to him/her.

Addressing the plaintiff’s claim for damages, the court concluded that the plaintiff had not shown proof of actual damage suffered on account of the use of a deceptively similar trademark by the defendant. However, it could hardly be disputed that the defendant must have made profits by using the plaintiff’s trademark. Further, the use of a deceptively similar mark by the defendant appeared to be dishonest and in bad faith, and the plaintiff was likely to suffer financial, as well as reputational, harm.

The court thus issued a permanent injunction restraining the defendant from packing, selling, distributing, marketing or promoting any analgesic/anti-inflammatory drug under the trademark PENTAGESIC or any other mark which is identical or deceptively similar to that mark. Further, as a punitive measure and to deter unscrupulous infringers, the court also awarded damages of Rs500,000 in favour of the plaintiff.

Smitha Krishna Prasad, Aarushi Jain and Gowree Gokhale, Nishith Desai Associates, Mumbai