A ‘Candid’ Win for Glenmark Pharmaceuticals Ltd. in Trademark Infringement Suit

Lucy Rana, Isheta Srivastava | November 2018

ollywood movies are an integral part of Indian lives and in most cases a depiction of Indian realities. A very famous dialogue that is often heard in the movies over here is ‘Kanoon ke haath bahot lambe hote hai’ (Law has long arms). This time the Indian judiciary has proved it all over again. And Galpha Phamaceutical, a habitual trademark infringer, learnt it the hard way. The Bombay High Hon’ble Court has recently in the case of Glenmark Pharmaceuticals Ltd. vs. Curetech Skincare and Galpha Laboratories Limited opined that ‘a party who has no regard or respect for the rule of law, should not ever be under an impression that they can get away every time from the clutches of law despite being involved in these kinds of activities.’ The case is also a proof of the serious enforcement of IP rights in the country.

The case is a milestone for several reasons:

Peril of trademark infringement is treated like never before sending out a message that no one can get away with law.
Directions to other enforcement agencies were considered rather than merely passing an injunction order. This has generally been an issue in most enforcement actions where a mere Hon’ble Court order is of no significance without the engagement of all enforcement agencies to stop infringement.
The benevolent act of the Glenmark Pharmaceuticals Ltd.

GLENMARK PHARMACEUTICALS LTD. VS. CURETECH SKINCARE AND GALPHA LABORATORIES LIMITED

Facts

Glenmark Pharmaceuticals Ltd (hereinafter referred to as ‘the Plaintiff’) is the owner of a drug Candid – B, which is an anti-fungal cream. Galpha Laboratories Ltd (hereinafter referred to as ‘the Defendant No. 2’) is a proprietor of a drug Clodid – B (hereinafter referred to as ‘the Impugned Product’), which was also an anti-fungal cream. Plaintiff accused Defendant No. 2 of trademark infringement as both the products were having similar packaging and trade dress.

InFrIngIng Products Party’s contentIons

In the suit it was contended that Curetech Skincare (hereinafter referred to as ‘the Defendant No. 1’) was only a contract manufacturer who was manufacturing the impugned product for and on behalf of the Defendant No.2, who claimed to be the proprietor of the impugned mark. It was further contended that the art-work, labels and marks were provided by the Defendant No.2 to Defendant No.1. Defendant No.1 was ready to submit to a decree of permanent injunction that was passed by the Hon’ble Court.

On the accusation by the Plaintiff, Defendant No.2 submitted that the trademark used on the impugned product was adopted by mistake. Further, it also submitted that it was not involved in any other infringing activities. Defending itself, Defendant No.2 stated that ‘It owned several trademarks and takes its intellectual property rights seriously. It also admitted that they ought to have acted

Diligently before adopting and using the impugned trademark.’ Agreeing to bring the suit to an end and submitting to the decree of the Hon’ble Court, it stated that it had sold the impugned products worth INR 2.92 Crores approximately.

This was where the turning point in the story came!!

Arguing against the contentions of the Defendant, the Plaintiff alleged that Defendant No. 2 had a habit of infringing the Plaintiff’s trademark. Basis this it contended that the Defendant should not be allowed to go scot free. In support of its claim of Defendant No. 2 being ‘habitual offender’, the Plaintiff brought to the notice of the Hon’ble Court several documents:

A cease and desist notice dated July 14, 2003, which was sent to the Defendant No.2 regarding their trademark ASCODIL which was infringing the Plaintiff’s registered trade mark ASCORIL.
A written unconditional apology sent by Defendant No.2 wherein it gave an undertaking dated June 9, 2004 stating that they would not infringe the Plaintiff’s rights and use the mark ASCODIL in future.
A copy of the judgement dated January 4, 2016 of the Delhi High Hon’ble Court in the case of Win-Medicare Pvt. Ltd. Vs. Galpha Laboratories Ltd. & Ors, wherein Defendant No.2 was categorically held to be ‘habitual infringer’.
Various news articles available online which reveal that the Defendant No.2 has violated FDA regulations several times. In support of its contention the Plaintiff also submitted that companies such as Centaur Pharma Pvt. Ltd., Franco-Indian Pharma Pvt. Ltd., Cipla Ltd. have filed suits for infringement/passing off against the Defendant No.2.

Hon’ble Court’s DeCision

Looking at the gravity of the issue at hand and with a mindset of setting an example, the Hon’ble Court imposed heavy costs on the Defendants. It imposed an amount of INR 1,50,00,000/- (Approx. USD 205000) as an appropriate amount of costs to be paid by the Defendant No.2.

It held that ‘This is a case where the conduct of the Defendant No.2 is not only dishonest but also audacious and such which displays no regards to the authority/rule of law.’

It was held in the case that the Defendants are blatantly copying the word mark, art work, color scheme, font style, manner of writing, trade dress of the Plaintiff’s product to the last millimeter. The Hon’ble Court further pointed out that there was no doubt in the fact that Defendant No.2 was a habitual offender with a set modus operandi of copying brands of other companies to make profits.

Also, PubliC interest wAs A HigHligHt in tHis CAse, As:

A special gesture was shown on behalf of the Plaintiff’s wherein they donated the entire compensation as a donation to the Kerala Chief Minister Distress Relief Fund, looking at the catastrophe that has hit Kerala recently and the fact that Kerala Flood situation is a ‘Disaster of Serious Nature’ which has been categorized as L3 Level of Disaster by the National Disaster Management Guidelines.
The Hon’ble Court opining 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.’

About Author

Lucy Rana

Lucy Rana is a Partner at S.S. Rana & Co. Her practice is focused on Intellectual Property and Corporate Law with emphasis on luxury goods, F&B, FMCG, hospitality, E-commerce, Information technology, automobile, sports and fitness, media and entertainment and the gaming industry industries. Lucy assists both multinational corporations and grassroot startups on all aspects of brand development from inception through international and national expansion and beyond.

Isheta Srivastava

Isheta Srivastava is an Associate Advocate at S.S. Rana & Co., a premier Intellectual Property Law Firm. She is a registered Advocate with Bar Council of India. She has completed her graduation from Symbiosis Law School, Noida and has done her Masters in Intellectual and Technology Law from National University of Singapore. She is skilled in Research and her areas of focus Intellectual Property Rights, Innovation and Information policy.