|CITATION||2018 (76) PTC 114 (Bom)|
|COURT||Bombay High Court|
|JUDGES/CORAM||Justice S.J. Kathawalla|
|DATE OF JUDGEMENT||28.08.2018|
Intellectual Property Rights grant their holders the right to sue for any infringement in relation to their businesses and products. In trademark infringement and passing off actions, imposition of costs and damages is a very common remedy sought by plaintiffs and allowed by Courts. These damages may be nominal or exemplary. But it is very rare that damages more than Rs.1,00,00,000/- are imposed in India in such cases. The present case is a precedent where the Bombay High Court imposed exemplary damages to the tune of Rs. 1.5crores.
The facts of the case are: The plaintiff in the present suit was Glenmark Pharmaceuticals Ltd., who filed the suit against defendant company, Curetech Skincare, for having sold products under the mark ‘CLODID-B’, which was similar to plaintiff’s ‘CANDID-B’.
The defendants claimed that the impugned trademark was adopted by them mistakenly and that they did not wish to injure the plaintiff. They were ready to submit to the decree, render accounts and did not wish to contest the suit any further. The plaintiff made their case and the Court was satisfied with the same. But in this case special attention was attributed to the defendants being a habitual infringer as well as a habitual offender. Keeping in mind the two things, learned single judge, Justice S.J. Kathawalla imposed exemplary damages on the defendants.
The main issues in the case are:
- Whether or not the defendant is a ‘habitual infringer’ and a ‘habitual offender’.
- Whether or not exemplary costs should be imposed on the defendant so as to deter them in future.
Summary of court decision and judgment
The High Court in this case, even after being assured by the Director of the defendant company of future discipline, imposed Rs. 1,50,00,000/- as the costs. The reasons stated by the Court were habituated infringing done by the defendants and their negligence in providing standard quality medicines to the public, time and again. The defendants were ordered to withdraw all products bearing the mark ‘CLODID-B’ effective immediately and destroy them; apply for cancellation of manufacturing permissions for CLODID products; strictly abide by FDA rules and regulations; and desist from doing any such activities with any pharmaceutical companies in the future.
In the present case, it was found by learned single judge that the disputed product of the defendant is a “systematic” and “blatant” copy of the plaintiff’s product. From the word mark to the packaging, everything was a sham and copy. Though the defendants in this case were ready to submit to the decree and orders passed by the Court, the plaintiff drew the Court’s attention to past activities of defendant. The defendant had time and again infringed plaintiff’s marks. In 2003, the plaintiff had sent a cease and desist order to the defendant when the latter copied the former’s trade mark ‘ASCODIL’. The defendant tendered an unconditional apology. Not only of the plaintiff’s, but the defendant had engaged in copying trademarks of other well-known pharmaceutical companies also, such as Cipla Ltd., Smithkine Beecham PLC, Times Drugs and Pharmaceuticals, among many others. The defendant had been labelled as a ‘habitual infringer’ by the Delhi High Court in a case against him. Thus, defendant is a habitual infringer, breaking the laws time and again.
In the present case, defendant could have had nominal costs imposed on him, but because of the pharmaceutical company being a habitual infringer, they were liable for heavy damages costs. Apart from being a habitual infringer, the defendants had a number of allegations of being not of standard quality or spurious or adulterated. They had numerous FDA Investigations for rules violations against them. Thus the defendant was a habitual offender of the law also. Keeping in mind the importance of medicines to the human life, the defendant had displayed gross negligence of laws and ethics. The case presents a huge detriment to law-breakers and habitual infringers. It is only by way of imposition of high costs that persons are made to fear the infringing activities.
The decision given by the Bombay High Court is correct. Though the Court did not take into account the statutory provisions like the Trade Marks Act, 1999, etc. it applied basic and general principles of law to reach the judgement.
In his judgement, learned single judge said that the “defendant has no regard or respect to the rule of law”. It is in such cases that exemplary costs are the only way to prevent any similar future litigation. Such unscrupulous practises are harmful not only the rivals and competitors but also the public who rely on medicines, drugs and other products from pharmaceutical and other companies, which if not of proper standards may play with their health, life and prosperity.
 Win-Medicare Pvt. Ltd. Vs. Galpha Laboratories Ltd. & Ors., 65 PTC, 506 (Del: 2016)