A public-health emergency does not licence trademark infringement. That is the crux of the Madras High Court’s refusal to vacate an injunction against Sun Pharma in a dispute with Cipla over the mark “Respule.”
The dispute
Cipla had used “Respule” since 2013 for respiratory treatments, under brands including Budecort Respules and Duolin Respules. It alleged that Sun Pharma sold medicines under a deceptively similar “Respule” mark and imitated its packaging, labels and artistic trade dress — pleading trademark infringement, copyright infringement and passing off.
The court granted an interim injunction on 30 April 2021. Sun Pharma filed three applications to vacate it, arguing pandemic-driven demand and stockpiling justified selling its existing stock (with a one-year expiry).
What the court held
The Madras High Court dismissed Sun Pharma’s applications and kept the injunction, in pointed terms:
- The defendant’s label and trade dress were “prima facie slavish imitation of the plaintiff’s label wrapper to take advantage of the unprecedented demand” for these medicines.
- The balance of convenience favoured continuing the injunction, “notwithstanding… the medical emergency.”
- Releasing the products would cause “incalculable damage to the proprietary rights of the plaintiff.”
- The court “cannot… remain a mute spectator” to an IP violation and passing off, even amid an unprecedented medical emergency.
Sun Pharma was directed to change its trade dress, layout, colour combination, design, artistic work and deceptively similar wording.
Why it matters
- Force majeure is not a defence to infringement. A crisis may explain commercial pressure, but it does not excuse copying a rival’s mark and get-up.
- Trade dress is protectable. Slavish imitation of packaging, labels and artistic wrappers grounds copyright and passing-off claims alongside trademark infringement.
- Public interest cuts the other way too. In pharma, consumer safety actually reinforces protection against confusingly similar marks.
Frequently asked questions
Can a medical emergency justify using a similar drug mark? No. The Madras High Court held that a pandemic and public-interest arguments do not excuse imitating a rival’s mark and trade dress.
What is “trade dress”? The overall visual get-up of a product — packaging, labels, colours and artistic elements — which can be protected through copyright and passing off.
What did the court order Sun Pharma to do? To stop using the imitative mark and to change its trade dress, layout, colours, design and wording.
Why did the injunction stay in place? Because the imitation was prima facie slavish, the balance of convenience favoured Cipla, and lifting it would cause incalculable damage to Cipla’s rights.
Legislation referred to
- The Trade Marks Act, 1999
- The Copyright Act, 1957