In a notable development, the Bombay High Court (“Court”) recently came down heavily on Syncom Formulation (India) Limited, a listed pharma company, for circumventing court orders and engaging in infringing conduct in a persistent fashion.
The Court’s observations came in a suit for trademark infringement filed by the plaintiff, Shalina Labratories, as regards its medicinal and pharmaceutical preparations. On the whole, the case appears to be an open-and-shut case of trademark infringement, inasmuch as the Court returned a clear finding in its order
dated 11.01.2018 that there is a significant amount of similarity between the plaintiff’s mark ‘SUPER APETI’ and the defendant’s mark ‘SUPER PEPTI’.
However, one distinctive feature that sets this case apart is that, instead of confining the scope of its enquiry to the present dispute, the Court has decided to use these proceedings as a tool to nib the problem of the defendant engaging in a pattern of infringing conduct in the bud by clamping down on the defendant’s modus operandi. As the Court noted in its order
dated 24.1.2018, while the defendant agrees to abide by the decrees issued by the Court against it, soon thereafter, it begins to adopt a nefarious design to circumvent such decrees or begins to infringe the well-known marks of other manufacturers. In this manner, it not only cheats the manufacturers whose marks it is infringing, but also lowers the dignity of the Court.
In this regard, relevant observations of the Court deserve to be quoted in full:
“In fact, the Advocate appearing for the Plaintiffs has today produced the compilation of orders passed by this Court in various Suits filed by the Plaintiffs / other manufacturers, from which the modus operendi (sic) of the Defendant Company has become clear namely to infringe the registered trade mark of well-known manufacturers and when their misdeeds are exposed and they are brought before the Court, to submit to a Decree and thereafter start infringing some other well-known marks. In my view, the Directors of the Defendant are in this matter not only cheating the manufacturers by infringing their registered trademarks and the members of the public but are also cheating this Court by indulging in such sharp practice.”
In light of the defendant’s conduct, the Court issued a set of broad and sweeping directions, including the requirement that directors of the defendant be personally present in Court, an embargo on the destruction of any of the infringing preparations and a direction that all the infringing material be sealed and locked.
In its order
dated 30.1.2018, the Court went one step further and directed the shipping company responsible for shipping the defendant’s preparations not to ship any consignment until further orders. I understand that the matter was listed on 13.2.2018, but I am unable to obtain any order for the aforesaid date on the Bombay High Court’s website. The matter has now been listed today.
While the ultimate outcome of this suit remains to be seen, one hopes that the Court’s strongly worded observations send a clear message to defendants adopting such a nefarious design to flout court orders and harass plaintiffs that such conduct will be met with the strictest possible sanctions. This, in turn, will hopefully deter defendants from acting in ways that not only denude the IP rights of others but also undermine the sanctity of the judicial process.