Delhi High Court
Merck Sharp & Dohme Corporation & ... vs Aprica Pharmaceuticals Private ... on 14 November, 2017
#F-24
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 1236/2013 & I.As. 16133/2013, 280/2014 AND
9968/2013
MERCK SHARP & DOHME
CORPORATION & ANR. ..... Plaintiffs
Through: Mr. Pravin Anand, Advocate with
Ms. Udita Patro and Mr. Shamim
Nooreyezdan, Advocates.
versus
APRICA PHARMACEUTICALS
PRIVATE LIMITED ..... Defendant
Through: None.
% Date of Decision: 14th November, 2017
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J: (Oral)
1. Though the defendant initially entered appearance, yet after 13th
July, 2017, it stopped appearing and did not file any written statement.
Accordingly, the defendant was proceeded ex parte vide order dated 3rd
November, 2017.
2. At this stage, learned counsel for the plaintiffs states that in view
of the judgment of this Court in Satya Infrastructure Ltd. & Ors. Vs.
Satya Infra & Estates Pvt. Ltd., 2013 SCC OnLine Del 508, the present
suit should be decreed qua the relief of injunction. The relevant portion
of the said judgment relied upon by learned counsel for the plaintiffs is
reproduced hereinbelow:-
"I am of the opinion that no purpose will be served in
such cases by directing the plaintiffs to lead ex parte evidence
in the form of affidavit by way of examination-in-chief and
which invariably is a repetition of the contents of the plaint.
The plaint otherwise, as per the amended CPC, besides being
verified, is also supported by affidavits of the plaintiffs. I fail
to fathom any reason for according any additional sanctity to
the affidavit by way of examination-in-chief than to the
affidavit in support of the plaint or to any exhibit marks being
put on the documents which have been filed by the plaintiffs
and are already on record. I have therefore heard the
counsel for the plaintiffs on merits qua the relief of
injunction."
3. Learned counsel for the plaintiffs further states that he has
instructions not to press for any relief other than the relief of permanent
injunction and costs, as prayed for in prayer clause (a) and (d) of the
plaint.
4. The relevant facts of the present case as pointed out by learned
counsel for the plaintiffs are as under:-
A. The plaintiff No.1 along with its various subsidiaries is
amongst the world's leading Pharmaceutical companies and is
dedicated to discovering, developing and providing
innovative pharmaceutical products that prevent and cure
diseases and address evolving medical needs of patients and
society worldwide. Plaintiff No.2 is the licensee of plaintiff
No.1.
B. The plaintiff No.1 is the registered proprietor of Indian Patent
No.209816 that covers a product which has been given the
International Non-Proprietary name SITAGLIPTIN. The said
molecule is commercially sold by the plaintiffs in India
extensively under the brand/commercial name JANUVIA.
C. The plaintiff No.1 manufactures another product which is a
combination of SITAGLIPTIN and another drug known as
METFORMIN HCI which falls under the protection afforded
to Indian Patent No.209816 and the said combination is sold
by plaintiff No.1 under the brand/commercial name
JANUMET.
D. The defendant is engaged in the business of marketing,
selling and/or offering for sale various pharmaceutical
products. The plaintiffs have reasonable apprehension that the
defendant is going to launch a generic version of
SITAGLIPTIN under the brand name ECOGLIPT in the
Indian market.
E. The source of plaintiffs' apprehension is based on two SMSes
dated 17th May, 2013 and 30th May, 2013 sent by the
defendant to its field force. The said SMSes are reproduced
hereinbelow:
SMS dated 17th May, 2013
" Seeds of the future r planted in the present. Another step
from APRICA on the path of dynamic growth. NEW
LAUNCH! ECOGLIPT, sitagliptin from APRICA. BE
PREPRD".
SMS dated 30th May, 2013
"Economical gliptin" Ecoglipt MOA-It works to
competitively inhibit the enzyme dipeptidyl peptidase 4 (DPP-
4). This enzyme breaks down the incretins GLP-1 and GIP
(GI hormone)" .
F. The perusal of aforesaid SMSes makes it clear that the
defendant at the time of filing the lawsuit was soon going to
launch a generic version of the patented product
SITAGLIPTIN across the country under the brand
ECOGLIPT. However, to the best of the plaintiffs'
knowledge, the defendant had not launched the infringing
product at the time of filing of the lawsuit.
G. The defendant's product is a generic version of
SITAGLIPTIN which blatantly infringes the plaintiff No.1's
Indian Patent No.209816 wherein SITAGLIPTIN and its
pharmaceutically acceptable salts, including Phosphate are
specifically claimed in Claim 19.
H. The acts of the defendant are prohibited under Section 48 of
the Patents Act, 1970 and are in complete contravention and
disregard of the plaintiff No.1's existing and valid Indian
Patent No.209816.
I. Since a Coordinate Bench of this Court has already issued a
certificate of validity to the suit patent through its order dated
07th September, 2016 passed in CS(OS) 586/2013, there is no
plausible explanation for the defendant in using
SITAGLIPTIN and its pharmaceutically acceptable salts for
its impugned product ECOGLIPT.
J. Though the infringing product ECOGLIPT had at the time of
filing of the lawsuit not yet been commercially sold by the
defendant, there existed a reasonable apprehension that the
defendant may launch their infringing product at a
commercial scale in the future and flood the markets which
would cause irreparable harm to the plaintiffs.
5. In view of the averments made in the plaint, which remain
uncontroverted, this Court is of the view that the plaintiffs are entitled to
the judgment in terms of the relief claimed for in prayer clause (a) and (d)
of the plaint as it is a quia timet action. A Coordinate Bench of this Court
in Mars Incorporated Vs. Kumar Krishna Mukerjee and Ors., 2003 (26)
PTC 60 (Del) has held as under:-
"16. Quia Timet is actually a Latin word which means
"because he fears or apprehends". In legal terminology it has
been defined in Osborne's Concise Law Dictionary (London:
Sweet and Maxwell, 8th edn. 1993, Bone and Rutherford) as
an action by which a person may obtain an injunction to
prevent or restrain some threatened act being done which, if
done, would cause him substantial damage, and for which
money would be no adequate or sufficient remedy...
xxxx xxxx xxxx xxxx
21. To expect the aggrieved party to wait and watch for the
opening of business or manufacturing or sale or goods under
the apprehended infringement of trade mark is too much. A
stitch in time always saves nine and that is what is the essence
of Quia Timet Action..."
6. In view of the above, the suit is decreed in favour of the
plaintiffs and against defendant in terms of prayer clause (a) and (d) of
the plaint along with the actual costs. The costs shall amongst others
include the lawyers' fees as well as the amounts spent on purchasing the
court fees. The plaintiff is given liberty to file on record the exact cost
incurred by it in adjudication of the present suit, if not already filed.
Registry is directed to prepare a decree sheet accordingly.
7. Consequently, the present suit and applications stand disposed of.
MANMOHAN, J
NOVEMBER 14, 2017
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