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Interim injunctions in India: the Roche-Cipla saga

Issue: June 2009

Keywords (click to search): interim injunction IP intellectual property India Roche Cipla

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Manisha Singh Nair

manisha@lexorbis.com

Lex Orbis

As patent litigation witnesses a rise in Indian courts, the grant of an interim injunction at the beginning of the trial entails utmost importance. An interim injunction is passed under Order XXXIX Rule 1 & 2 of the Civil Procedure Code 1908, and remains in force until the trial of the main case concludes.

The role of an interim injunction is particularly prominent in intellectual property litigation since it prevents continued violation of the rights claimed in the suit while the trial is still pending. In order to decide upon an application for the grant of an interim injunction, the court takes certain considerations into account that have evolved out of judicial deliberation. These considerations include:

a) Establishment of a prima facie case of infringement: the plaintiff must establish that he is the owner/ holder of the claimed intellectual property and that the acts of the defendant amount to infringement;

b) Irreparable loss and injury being caused to the plaintiff: the plaintiff must establish that he would suffer an irreparable loss of business and reputation due to the alleged infringing acts of the defendant being allowed to continue;

c) Balance of convenience lying in favour of the plaintiff: in determining the balance of convenience, the court weighs the plaintiff's need for protection against the defendant's loss accruing from being prohibited for doing the alleged acts, in case the matter is resolved in the defendant's favour after full trial.

In cases where, upon perusal of the records, the court is satisfied of the above three conditions in favour of the plaintiff - but feels that the defendant is likely to destroy evidence, dispose of property or take such similar action - it may order an ex-parte interim injunction, pronounced in the absence of defendants. Alternatively, the defendant may be called upon to appear and submit its reply to the application for an interim injunction.

The prominence of a discretionary remedy such as an interim injunction was witnessed yet again in the litigation between drug manufacturers Roche and Cipla. Roche filed a suit alleging that Cipla had infringed the patent on its drug Tarceva, but this was denied an interim injunction. The judge found Roche to have a prima facie and arguable case in its favour, but said that both parties were equally pitted against each other. The court then took into consideration the pricing of the life-saving drug, whereby Cipla's drug Erlocip was priced at one-third the price of Roche's Tarceva. In view of this, the court brought in the aspect of public interest to determine the balance of convenience. Further, the court ordered Cipla to maintain and submit faithful records of the sale of its drug Erlocip.

The judge's decision for the first time in Indian courts extrapolated the public interest consideration in determining the grant or denial of an interim injunction. Roche however, aggrieved of the verdict to the application, filed an appeal to the order of the judge.

The bench presiding over the appeal disagreed with the single judge on the point of a prima facie case being existent in favour of Roche. A challenge to the valid existence of the patent had been raised and the court gave due regard to the evidence adduced before it. While deciding upon the matter, the division bench raised a doubt as to the validity of the patent which was claimed to be infringed and denied the establishment of a prima facie case necessitating the grant of an injunction. Further, the court also said that Roche had not made full disclosure of the facts pertaining to the patent in question, which in their opinion substantiated the absence of a prima facie case being established. The appellate bench concurred with the single judge on the aspect of access to public at large. In this view, the appeal was upheld while imposing costs upon Roche amounting to Rs.5 Lakhs.

As patent litigation gains pace in India, the course that interim injunctions shall take cannot be ignored. An interim injunction is a remedy that prevents the violation of rights while the trial of the suit stands pending. So the impact that the grant or denial of this has on the optimum exploitation of the commercial aspects appended to the intellectual property concerned is a matter of concern.

The Roche-Cipla litigation is indeed a reflection of the judicious application of the tenets governing the grant of an injunction, as evolved and practiced among Indian courts.

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