Johnson & Johnson vs. Pritamdas Arora T/A M/S Medserve & Anr

Facts

The plaintiff, Johnson & Johnson, a global healthcare company, filed a suit seeking permanent injunction against the defendants, Pritamdas Arora T/A M/s Medserve & Anr, for infringing its trademarks 'SURGICEL' and 'ETHICON'. The plaintiff manufactures and sells surgical devices under these marks, which are registered in India. The dispute arose when counterfeit 'SURGICEL' products were discovered. Investigations traced the source of these counterfeit products through various entities in the USA and UAE, ultimately leading to the defendants. The plaintiff alleged infringement, sale of counterfeits, and passing off. The suit was filed in October 2019. The judgment details the plaintiff's extensive use and registration of the trademarks and the chain of events leading to the discovery of counterfeit products originating from the defendants.

Held

The Court held that the defendants had infringed the plaintiff's trademarks 'SURGICEL' and 'ETHICON' and were liable for passing off. The Court found that the plaintiff had established its rights in the trademarks through extensive use and registration. The defendants' actions in selling counterfeit surgical devices were deemed a deliberate and wilful infringement. Consequently, the Court granted a decree of permanent injunction in favour of the plaintiff, restraining the defendants from infringing the trademarks. The plaintiff was also awarded compensatory damages amounting to ₹2,34,82,986/- and exemplary damages of ₹1,00,00,000/- due to the gravity of the infringement and the harm caused. The Court also permitted the plaintiff to destroy the seized counterfeit products. The plaintiff was allowed to recover actual costs from the defendants, with the bill of costs to be filed within four weeks. The remaining reliefs claimed by the plaintiff were not pressed.

Key Issues

1. Whether the defendants infringed the plaintiff's trademarks 'SURGICEL' and 'ETHICON' by selling counterfeit surgical devices, thereby constituting passing off and unfair competition? (Relates to trademark infringement and passing off principles under common law and potentially relevant provisions of the Trademarks Act, 1999). 2. Whether the plaintiff is entitled to compensatory and exemplary damages for the losses incurred due to the infringement and sale of counterfeit products? Petitioner's Arguments: The plaintiff argued that they are the registered proprietors of the trademarks 'SURGICEL' and 'ETHICON' and have been using them extensively in India since the 1990s. They contended that the defendants' sale of counterfeit surgical devices under these marks constitutes infringement and passing off, causing significant financial loss and reputational damage. The plaintiff also sought exemplary damages due to the deliberate and wilful nature of the infringement, citing precedents like Rookes and Hindustan Unilever. Revenue/State's Arguments: No arguments were recorded for the revenue or state as this is a civil suit for infringement and not a tax dispute.