Curewell Drugs v. Ridley Life Science



Citation: 2019 (77) PTC 657 (Del)

Court: High Court of Delhi

Bench: Prathiba M. Singh, J.


Facts –

Curewell Drugs & Pharmaceuticals Pvt. Ltd. and Horizon Bioceuticals Pvt. Ltd. (together referred to as “the Plaintiffs”) filed a case against Ridley Life Science Pvt. Ltd. (“the Defendant”) for trademark infringement. The Plaintiffs alleged that the Defendants adopted an identical mark and packaging for an identical multivitamin supplement called “Bevital”. The Court had previously granted an interim injunction against the Defendant. However, this judgment arises out of a suit for permanent injunction filed by the Plaintiffs seeking trademark and trade-dress protection for Bevital. In addition to the question of permanent injunction, for the general public interest, the Court extended the scope of the case to determine the role of the Drug Controller General of India (“DCGI”) and state Food and Drug Administration (“FDAs”) in approving drugs with similar brand names. Accordingly, the DCGI and the Government of the National Capital Territory of Delhi (“GNCTD”) were impleaded as Defendants (together referred to as “the Defendants”) in the present matter.


Issues –

  • Whether a decree of permanent injunction along with damages and costs ought to be passed against the Defendant?

  • What is the role of the DCGI and state FDAs in approving drugs with similar brand names?


Laws Involved -

Trademarks Act, 1999

  • Section 29 - Infringement of registered trademarks

Drugs and Cosmetics Act, 1940

  • Section 17 – Misbranded Drugs

  • Section 17A – Adulterated Drugs

  • Section 22 – Powers of Inspectors


Analysis –


  • Whether a decree of permanent injunction along with damages and costs ought to be passed against the Defendant?

The Plaintiffs contended that the Defendant was habitually involved in the infringement of trademarks and that the present case was the second instance wherein the Defendant had adopted a brand name and packaging which was identical to the Plaintiffs. Thus, the Plaintiffs argued that punitive damages ought to be imposed on the Defendant. The Defendant did not dispute its liability with respect to the allegations put forth by the Plaintiffs. In light of the prevailing facts and circumstances, the Court passed a decree of permanent injunction. Additionally, the Court required the Defendants to pay a sum of Rs. 2,00,000 to the Plaintiffs. In case of any future violation of the Plaintiffs’ trademarks, the Court held that the Defendant shall undisputedly pay Rs. 10,00,000 to the Plaintiffs as damages.


  • What is the role of the DCGI and state FDAs in approving drugs with similar brand names?

In the present case, approval for the manufacture and marketing of the Defendant’s drug Bevital was given by the State FDAs on 4th August 2017, at which point, the Plaintiffs’ product Bevital was already in the market. This led the Court to consider the role played by the DCGI and the State FDAs in approving drugs, more specifically, with identical or similar brand names and noticed that there were no checks conducted to prevent such registration. The Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.[i].had dealt with a similar issue where it held that applicants must be required to submit an official search report from the Trade Mark Office at the time of registration of drug names. Additionally, as per the Drugs and Cosmetics Act, 1940, the DCGI has the obligation to ensure the quality, safety, and efficacy of medicines which is counteracted by allowing the registration of identical brand names.


Conclusion –

The Delhi High Court opined that the sale of drugs with identical brand names poses not only an issue concerning statutory or IP rights but could, in certain circumstances, threaten the lives of its consumers due to a high likelihood of confusion. Relying upon the dictum passed by the Supreme Court in Cadila[ii], the Court directed the DCGI, state FDAs, and the Secretary Ministry of Health to enter into joint consultation and implement an action plan to ensure that identical brand names or marks are not given licenses. Accordingly, the Drug Technical Advisory Board (“DTAB”) and the Drug Consultative Committee (“DCC”) constituted under the Drugs and Cosmetics Act, 1940, in DCC meetings discussed the evolution of a mechanism to regulate similar brand names/trade names for Pharmaceutical Products. In addition, the Court directed the creation of a master electronic database containing a list of trade names of drugs issued and making it accessible to DCGI and state FDAs, including a list of trademarks granted to Pharmaceutical and medicinal preparations and certain other recommendations pertaining to periodic checks, meetings, and strict implementation. Presently, a set of draft rules have been prepared and lie before the Ministry of Health for approval. The judgment passed by the Delhi High Court in the present matter and its impact in bringing about required reforms in the law highlights the importance and power of the judiciary.

References:

[i] Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd., 2001 (2) PTC 541 SC.

[ii] Ibid.

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