Bristol-Myers Squibb Holdings Ireland v. KM Swarnalatha & Ors.

1. The present suit has been filed seeking a permanent injunction restraining infringement of Indian Patent No. IN 203937, trademarks, passing off and other consequential relief.

2. As per the case canvassed on behalf of the plaintiffs, the plaintiff no. 1 is the patentee of the Patent No. IN 203937 that claims and covers dasatinib and it’s pharmaceutically acceptable salts, solvates, isomers and prodrugs.

3. It is to be noted that the suit patent was valid till its expiry on 12th April, 2020.

4. It is the case on behalf of the plaintiffs that the cause of action arose against the defendant nos. 1 to 4 in the last week of August, 2015, when the plaintiffs found that the defendant nos. 1 to 3, were advertising the impugned product being dasatinib on their websites. As per the plaint, the cause of action further arose when the plaintiffs received information that the aforesaid defendants were planning to launch the generic version of dasatinib. Accordingly, the present suit was filed before this Court.

5. Vide order dated 4th September, 2015, an ex-parte ad-interim injunction, was issued in favour of the plaintiffs by this Court, against the defendants. Thereafter, vide order dated 19th December, 2019, the ad-interim injunction was made absolute, till the expiry of the term of the patent, i.e., till 12th

6. The cause of action against defendant nos. 5 to 7 arose around November, 2016, when the plaintiffs discovered that a dasatinib product under the brand name DASA SPL had been released at the distributor level in the Indian market. On inquiry, it was found that the said product was manufactured by one SP Labs, i.e., defendant no. 7, having its registered address in Dhaka, Bangladesh. Further, investigation revealed that it was an associated company of Indian Company namely SP Labs Pvt. Ltd., i.e., defendant no. 6.

7. Attention of this Court has been drawn to the order dated 12th December, 2023 passed in the present case, wherein, it has been noted as follows: “xxx xxx xxx

12. At the stage of considering applications under Order VI Rule 17 CPC, it is the settled position that the Court does not go into the merits of the matter or the amendments. It is the case of the Defendants that Defendant no.7 is not connected to Defendant Nos. 1 to 3.

13. The ld. Counsel for the plaintiffs relies upon an order passed by the Coordinate Bench in CS (COMM) 4/2016 where the same Defendants were arrayed and the Court found that the said Defendants were connected to each other.

14. A perusal of the said order shows that there is some merit in what is being said on behalf of the Plaintiffs. Accordingly, the amendments are sought are allowed. The amended plaint is taken on record. xxx xxx xxx”

8. Attention of this Court has also been drawn to the order dated 25th April, 2023 passed in a previous suit, i.e., CS(COMM) 4/2016, wherein, the defendant no. 7 herein, as well as the other defendants, were arrayed as defendants in the said suit. The table showing the defendants in the present suit, and defendant in the previous suit of 2016, is as follows: Defendants CS COMM 693 of 2018 (present suit)

CS COMM 4 of 2016 KM Swarnalatha Director SP Accure Labs Pvt. Ltd. 18-17/1F-2, City Home Residency, Road No.3,Kamala Nagar, Hyderabad - 500 060 Defendant No.1 - SP Accure Labs Pvt. Ltd. 18-17/1F-2, City Home Residency, Road No.3,Kamala Nagar, Hyderabad - 500 060 Defendant No.2 Defendant No.2 Accure Labs Pvt. Ltd. Flat No. 1406A, 14th Floor, Building No. 89, Hemkunth Chamber, Nehru Place New Delhi - 110 019 Defendant No.3 Defendant No.6 K Vijaya Prakash Director, SP Accure Labs Pvt. Ltd. 18-17/1/F-2, City Home Residency, Road No.3, Kamla Nagar, Dilshuknagar, Hyderabad -500 060 Defendant No.5 Defendant No.1 SP Labs Pvt. Ltd. 5-6-59/101, Rajeevasarma Nagar, KL Rao Nagar, RS Nagar, Lambadipet, SAS College, Vijayawada, Andhra Pradesh 52000[9] Defendant No.6 Defendant No.3 SP Labs Bangladesh (Through its proprietors/ directors) Mohammad pur, Dhaka - 1207 Bangladesh Through the office of its Associate located at: 5-6-59/101, Rajeevasarma Nagar, KL Rao Nagar, RS Nagar, Lambadipet, SAS College Vijayawada, Andhra Pradesh 520 009 Defendant No.7 Defendant No.5 ( Different address)

9. Learned counsel appearing for the plaintiffs has relied upon the order dated 25th April, 2023 passed in CS(COMM) 4/2016, and in particular to the following paragraphs:

20. In light of the above, it is clear that the plaintiffs had filed accurate screenshots of the website of the defendant no.4, which showed that defendant no.5 is an associate company of the defendant no.4. Further, it appears that when enquired about the screenshot of the webpage of the defendant no.4 filed by the plaintiffs, the defendant no.1 altered the website of the defendant no.4 in order to remove any reference to the defendant no.5 being an associate company of the defendant no.4 (Exhibit DW-1/PY). But, in reality, I cannot be denied that the defendant no.5 was an associate of the defendant no.1/defendant no.4.

21. In order to circumvent the injunction order dated 6th January, 2016, the defendant no.1 was getting the impugned drug manufactured in Bangladesh through its associate company i.e., defendant no.5 and importing the same to India. In this regard, the plaintiffs have placed on record photographs of the products purchased from the market under the brand “CRIZO SPLTM” and “CRIZO SPALTM” after the interim injunction was passed by this Court. In respect of “CRIZO SPLTM”, the packaging of the impugned product records the name of the manufacturer as SP Labs Bangladesh i.e. defendant no.5. Further, the date of manufacture on the packaging is shown as March, 2016, thereby meaning that the said products were manufactured after the interim injunction was passed by this Court on 6th January, 2016.