Thursday, 15 December 2016

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’.

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