In October 2020, the plaintiffs (Aventisub LLC and Sanofi India Ltd.) came across the defendants’ (Healing Pharma India Pvt. Ltd. and D.M. Pharma) trademark application for a label containing the mark ‘Allergegra’ – a mark nearly identical to their well-known antihistamine drug ‘Allegra’ used to treat allergies. Further enquiries revealed that the defendants were using the ‘Allergegra’ mark in respect of antihistamine products being sold in the very same variants that ‘Allegra’ is sold, that is, in a suspension form, 120mg and 180mg strength, and a ‘M’ variant. The packaging, colour scheme and trade dress of ‘Allergegra’ products also closely matched the ‘Allegra’ packaging (see images below).

Represented by Remfry & Sagar, the plaintiffs (‘Sanofi’) instituted a lawsuit for infringement of trademarks and copyright as well as passing off before the High Court of Bombay (Aventisub LLC & Anr. v. Healing Pharma India Pvt. Ltd. & Anr. – Commercial (IP) Suit (L) No. 6866 of 2020, High Court of Bombay). Sanofi asserted it is a global leader in healthcare products and that its mark ‘Allegra’ – adopted in 1995 and introduced internationally in 1996 – was first sold in the Indian market in 1998, where it currently featured among the top 100 pharmaceutical brands. It furnished proof of Indian registrations for the ‘Allegra’ mark, the first of which dated back to 1997 (No. 762721) and also stated it owned the copyright in the distinctive artwork used on the ‘Allegra’ packaging. Further, annual sales turnover figures as well as details on promotional expenditures with regard to the ‘Allegra’ brand were submitted to demonstrate that the mark ‘Allegra’ as well as its distinctive colour packaging had acquired immense goodwill and reputation to become well-known. 

On the very first date of hearing, the court noted that prima facie the case at hand appeared to be one of blatant copying. The defendants’ adoption and use of the mark ‘Allergegra’ and packaging in respect thereof was found to be mala fide and an ex parte injunction order was granted against the defendants on November 27, 2020. The court also directed local commissioners to visit the defendants’ premises and seize infringing products, materials and packaging bearing the impugned mark ‘Allergegra’. Seizure operations were conducted successfully, subsequent to which the defendants agreed to submit to a decree. On March 1, 2021, the court decreed the suit in favour of Sanofi, permanently injuncting the defendants from using the impugned mark (or any variants) as well as associated packaging which violated Sanofi’s proprietary trademarks and copyright. The defendants were made to pay INR 75,000 (approximately USD 1000) in favour of a charitable institution, and the court further ordered destruction of all products seized during the local commission.

The strict stance adopted by the courts in India vis-à-vis infringement involving pharmaceutical drugs is noteworthy given the dangerous consequences that can arise from consumer confusion re such products. Judicial scrutiny in grant of ex parte orders, appointment of commissioners to undertake search and seizure operations, speedy disposal of suits with grant of damages and destruction of seized products is a much needed and welcome step!