Counterfeiting Medical Devices Not Merely Trade Mark Infringement, But A Grave Offence That Endangers Lives: Delhi High Court
The Delhi High Court awarded Rs. 3.34 Crores in damages to Johnson & Johnson in a trademark infringement and counterfeiting case.
The Delhi High Court held that counterfeiting of medical devices is not merely a case of trade mark infringement, but a grave offence that endangers the lives of people.
The Court awarded Rs. 3.34 Crores in damages to Johnson & Johnson (plaintiff) in a trademark infringement and counterfeiting case against M/s Medserve (defendant company). The Court passed a decree of permanent injunction in favour of the plaintiff restraining the defendants from infringing the trade mark, selling counterfeits, and passing of ‘SURGICEL’ products.
A Single Bench of Justice Amit Bansal held, “In my view, the counterfeit medical products sold by the defendants pose a significant threat to public health. Counterfeiting of medical devices is not merely a case of trade mark infringement, it is a grave offence that endangers the lives of people. The defendants’ conduct demonstrates a deliberate effort to mislead the public, jeopardize the consumer safety and exploit consumer trust for financial gain.”
Advocate Nancy Roy appeared for the Plaintiff.
Brief Facts
The suit was filed by the plaintiff seeking relief of permanent injunction restraining the defendants from infringing the trade mark, selling counterfeits, and passing off along with other ancillary reliefs.
Following the plaintiff’s complaint, the Delhi High Court, in 2019, issued an ad-interim injunction restraining the defendants from selling, distributing, or dealing in counterfeit SURGICEL and ETHICON products. The Court also appointed Local Commissioners to conduct search and seizure operations at the premises associated with Medserve.
It was found that Medserve had been engaged in counterfeiting since at least 2017 and had processed orders worth Rs. 9.39 crores.
Court’s Reasoning
The High Court took a serious note of an intercepted conversation where defendant, upon receiving complaints about infected counterfeit surgical products, advised his business associate to resolve the matter through bribery rather than corrective action. “Such conduct demonstrates blatant disregard for public health and safety,” the Bench remarked.
“The defendants’ deliberate and fraudulent acts have also caused irreparable harm to the plaintiff’s goodwill and market reputation. By selling substandard counterfeit products under the plaintiff’s trade marks, the defendants have misled consumers and associated the plaintiff’s name with the counterfeit goods,” the Court held.
Given the gravity of the infringement and the extent of harm caused, the Bench held that compensatory damages alone would be inadequate to compensate the plaintiff, and therefore, it awarded exemplary damages as well.
Accordingly, the High Court held, “In the present case, the defendants, through their conduct, have caused immense harm to the goodwill and reputation of the plaintiff. The defendants’ actions constitute a deliberate, conscious, and wilful infringement of the plaintiff’s rights. By selling counterfeit medical products, the defendants have not only inflicted substantial financial loss upon the plaintiff but have also misled the consumers who purchased these products under the false belief that they were genuine.”
Relief Granted
Given the deliberate and large-scale counterfeiting activities, the Court passed a decree of permanent injunction in favor of Johnson & Johnson and granted the following reliefs:
- Permanent injunction restraining the defendants from manufacturing, selling, or distributing any products under the trademarks SURGICEL, ETHICON, and LIGACLIP.
- Destruction of all counterfeit products seized during the raids.
- Compensatory damages of Rs. 2.34 crore, calculated as 25% of the total sales revenue generated by Medserve from counterfeit products.
- Exemplary damages of Rs. 1 crore.
- Actual litigation costs to be reimbursed to the plaintiff, with Johnson & Johnson required to submit a detailed bill of costs.
Cause Title: Johnson & Johnson v. Pritamdas Arora T/A M/S Medserve & Anr. (Neutral Citation: 2025:DHC:1585)
Appearance:
Plaintiff: Advocates Nancy Roy, Raghav Malik, Prakirti Varshney and Prashant
