India: Delhi High Court grants
injunction in favor of GSK
In this case, Glaxosmithkline
Pharmaceuticals (hereinafter referred to as the ‘Plaintiff’) filed a suit
against Sarath Kumar Reddy (hereinafter referred to as the ‘Defendants’) to
permanently injunct the latter from using the mark “GSK”. The Hon’ble High
Court of Delhi ruled in favor of the Plaintiff vide order dated November 2,
2016.
Brief facts and background of the
case
The
Plaintiffs herein are -
1. Plaintiff
no. 1: GlaxoSmithKline Pharmaceuticals Limited (hereinafter
referred to as ‘GSK India’)
2. Plaintiff
no. 2: SmithKline Beecham Limited (hereinafter referred to
as ‘SKB’)
The
Plaintiff no. 1 herein is a well-known pharmaceutical company, and the mark GSK
is a commonly used abbreviation for GlaxoSmithLline,
which has been in use since the year 2000 (as averred by the Plaintiffs in para
6 of the judgment). The Plaintiffs are a part of the GlaxoSmithKline Group,
which is the parent company.
The
Defendant herein is one of the directors of ‘GSK Life Sciences Private Limited
(hereinafter referred to as the “company”). The Defendants were using the mark
‘GSK’ as a part of their trade name, along with the GSK logo in the drop form.
On
May 30, 2013, the High Court had passed an ex-parte ad-interim injunction
against the Defendant, thereby restraining the same from using the mark GSK and
any other deceptively similar mark.
Plaintiff’s Submissions
The
Plaintiff’s submitted that -
- The GSK acronym has been in use since the year 2000.
- They are the registered proprietor of the mark GSK and variations thereof in India in various classes.
- That the Defendant Company is clandestinely carrying out its operations under the name ‘GSK Life Sciences Private Limited’.
- That the Defendant’s use of the GSK name/mark/logo in relation to pharmaceutical products amounts to trademark infringement as under Section 29(5) of the Act.
- That the mark GSK is a well-known mark.
Further,
the Plaintiffs established that the Company (Defendant) had been manufacturing
and dealing in products under the mark ‘GSK”. The Plaintiffs also relied on the
Apex Court’s judgment in Time
Incorporated v. Lokesh Srivastava, to pray for grant of exemplary and
punitive damages.
The Court’s Decision
The Court observed that the Defendant was also
operating in the pharmaceutical industry, and by using the mark ‘GSK’ was
infringing on the Plaintiff’s registered trademarks. The Court also opined that
the Defendant’s impugned logo is deceptively similar to that of the Plaintiffs.
Further, the Court did not grant the damages prayed
for as the Plaintiffs couldn’t establish the extent of the sales of the Defendant
and the quantum of loss caused to them by the Defendant.
The Court observed that the sales and turnover figures
submitted by the Plaintiff in support of their claims is a significant factor
whilst examining the reputation of the Plaintiff’s product.
The Court thereby granted a permanent injunction
against the Defendant, thereby restraining them from using the mark ‘GSK’.
