Case Brief: Sun Pharmaceuticals v. Cipla Ltd – IP Infringement
The Madras High Court has refused to vacate the interim injunction against the Applicant, Sun Pharmaceutical Industries, in the matter of Sun Pharmaceuticals (Applicant/Defendant) v. Cipla Ltd (Respondent/Plaintiff). Cipla Ltd, the Respondent, was seeking injunctive relief against Sun Pharma, alleging that the latter was selling pharmaceuticals under the trademark “Respule,” which was confusingly similar to Cipla’s trademarks “Budecort Respules,” “Duolin Respules,” and “Respules.” Cipla Ltd filed a lawsuit alleging trademark infringement, copyright infringement, and passing off.
Brief Background:
Cipla Ltd filed a lawsuit against Sun Pharma, seeking a permanent injunction for infringement of the “Respule” trademark. Cipla Ltd’s trademark “Respule” has been in use since 2013, and Cipla had been selling respiratory treatments under the names Budecort Respules and Duolin Respules. Sun Pharma, it said, had been using the mark “Respule” illegally and had sought to pass off by copying the aesthetic trade dress, packaging, and label.
On 30.4.21, the Court issued an interim injunction prohibiting Sun Pharma from using the mark until 2.06.21. Sun Pharma filed three counterstatements in response to the injunction, claiming that the items bearing the allegedly infringing mark had already been stockpiled owing to an unusual medical urgency.
The question before the Court:
When there is a continuing epidemic, should the ad-interim order be granted in favour of Cipla Ltd on the grounds of passing off, trademark and copyright infringement?
Arguments of Cipla
Sun Pharma, according to Cipla:
- Colorable imitation and substantial duplication of the mark “Respule” by copying the artistic trade dress, packaging, and label, resulting in copyright infringement in the Artistic Works.
- Adopted a confusingly identical mark to its own, resulting in infringement of its former “Respule” mark.
- Attempting to copy the trade dress, producing market misunderstanding and ultimately in an act of passing off.
- By utilizing the mark “Respule,” Cipla has taken unfair advantage of the epidemic and harmed Cipla’s well-known mark’s distinctive character and reputation.
Sun Pharma’s Arguments
Sun Pharma, the Applicant/Defendant, indicated that they would adopt a new package/label that is completely different from the one they are presently using because the medicine has been stored and has a one-year expiry date.
The Court’s Observations
The Court held that “The respective label and the trade dress adopted by the plaintiff has been copied by the defendant is prima facie slavish imitation of the plaintiff’s label wrapper to take advantage of the unprecedented demand in the market for these medicines. It is clearly intended to ride on the goodwill and reputation of the plaintiff”.
It also asserted that “The balance of convenience to continue the interim order granted by the court on 30.4.2021 still continues in favor of the plaintiff notwithstanding the fact that an attempt has been made by the dependent to nix the public interest due to the medical emergency in the country and world over with the rights of the plaintiff”.
Judgment:
The Court dismissed the applications filed by Sun Pharma for vacation of the interim order and held that the interim injunction shall continue subject to the final decision. The HC ruled 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 fact that the country is facing unprecedented medical emergency and possibly the patients suffering from covid symptoms require the drugs manufactured both by the plaintiff and the defendant for treating patients with respiratory ailments during these tough times”.
Interpretation
The relevance of the case resides in the fact that Sun Pharma did not contest the charge of trademark infringement, instead claiming medical necessity to sell the medicine’s already-stocked supply while utilizing the infringing mark/packaging. Because medical supplies are in such high demand during the pandemic, violation of intellectual property rights presents a difficult conundrum for regulators and the courts, who must strike a balance between public needs and private property rights.
Judgment: Sun Pharmaceuticals v. Cipla Ltd
Read Meanwhile: Trademark Registration in India
