Facts
Decision


In Bristol-Myers Squibb Holdings Ireland Unlimited Company (BMS) v Zee Laboratories Limited (Zee Labs), BMS sought a permanent injunction against Zee Labs for infringing BMS's patent covering the anticoagulant drug Apixaban.

Facts

BMS alleged that Zee Labs was manufacturing generic Apixaban and selling it as Apixaz and Apiquis on third-party e-commerce websites and social media platforms. Within a week, the court granted ad interim injunctive relief to BMS, restraining Zee Labs from using, making, selling, distributing, advertising, exporting, importing and offering for sale any product that infringed BMS's Apixaban patent under the brand names Apixaz and Apiquis or any other brand name. Zee Labs was also directed to delist or remove all the ads and links that infringed the patent from its website and third-party websites such as India Mart. In April 2022, the court directed Zee Labs to report the quantum of the infringing products that it had sold.

BMS contended that, despite the interim injunction, Zee Labs had continued to promote the infringing products on third-party websites such as India Mart. To this end, India Mart confirmed that the alleged listings would be taken down within 36 hours of BMS highlighting any relevant URLs promoting the infringing products.

Zee Labs, on the other hand, contended that BMS's patent had expired. It further contended that, in compliance with the court's November 2021 order, it had stopped selling the infringing products. Further, Zee Labs had provided details of its stocks of the infringing products, and stated that only a small amount of the infringing products had been sold during the covid-19 pandemic. Zee Labs submitted that it had acted without malice and in good faith – it had not contested the present suit, appeared for the first hearing (even though no notice had been served on it) and offered to settle the suit.

Decision

The court noted that BMS's patent had indeed expired on 17 September 2022. The court also noted that Zee Labs had acted in good faith before the court and that Zee Labs had not contested the suit. The court further observed that Zee Labs had made a meagre total sale of approximately 800,000 rupees (approximately $9,600).

The court held that, since the patent itself had expired, there could be no injunction on any manufactured stock that Zee Labs had from being sold from that date. For manufacturing the infringing products prior to the expiration of the patent, the court directed Zee Labs to pay nominal costs in the form of a contribution towards two air purifiers for the court.

For further information on this topic please contact Niharika Singh at K&S Partners by telephone (+91 80 4042 7900) or email ([email protected]). The K&S Partners website can be accessed at www.knspartners.com.