Delhi High Court: A suit was filed by Johnson & Johnson (plaintiff), a globally recognized pharmaceutical and healthcare company, seeking a permanent injunction against the defendants, for trademark infringement, counterfeiting, and passing off. Johnson & Johnson, through its subsidiary Ethicon, manufactures medical devices under the trademarks ‘SURGICEL’ and ‘ETHICON’. Amit Bansal, J., granted permanent injunction in favour of the plaintiff and imposed damages of 3 crores against the defendants jointly and severally.
The case arose after counterfeiting surgical products were discovered at the University of Kentucky Medical Center in the United States. The investigation traced the source of these fake products to a supply chain involving multiple entities, including XS Supply in the USA, Lion Heart Surgical Supply LLC in Florida, and Pure Care Traders F.Z.E in the UAE. Further inquiries revealed that the counterfeit products originated from Medserve, a New Delhi-based company owned by the defendant. These fake medical devices, manufactured by unauthorized third parties in China and Turkey, were being repackaged and distributed internationally, posing serious health risks. Upon gathering substantial evidence, Johnson & Johnson filed the present suit seeking an immediate injunction and damages.
The plaintiff contended that the defendants had engaged in large-scale counterfeiting operations, deliberately selling fake ‘SURGICEL’ and ‘ETHICON’ products. It was argued that the defendants’ actions posed a grave risk to public health, as the counterfeit products were found to be inadequately oxidized, non-sterile, and contaminated. Furthermore, the defendants had falsely applied Johnson & Johnson’s trademarks on counterfeit packaging, misleading customers and healthcare professionals. The plaintiff also presented evidence of the defendants’ involvement in repackaging expired medical products with falsified expiration dates. The plaintiff emphasized that the defendants’ actions had resulted in substantial financial losses and reputational damage.
The Court examined extensive evidence, including reports from local commissioners, electronic communications, and financial transactions, establishing that the defendants had engaged in counterfeiting and illicit trade practices. The Court noted that:
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The defendants were found in possession of counterfeit products, along with documents and electronic records indicating their involvement in manufacturing and distributing fake surgical devices.
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Communications retrieved from electronic devices confirmed that the defendants had sourced expired medical products, repackaged them with falsified expiration dates, and distributed them as genuine products.
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The defendants had misrepresented themselves as authorized sellers of Johnson & Johnson’s products by forging authorization documents.
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Evidence indicated that the defendants had engaged in money laundering and hawala transactions to conceal illicit proceeds from counterfeit sales.
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The defendants failed to appear in court and evaded proceedings, demonstrating willful non-compliance with judicial orders.
The Court referred to precedents in intellectual property law, emphasizing that fraudulent counterfeiting activities necessitate stringent judicial intervention. It highlighted the principles established in previous cases, asserting that intentional and organized counterfeiting operations warrant exemplary damages in addition to compensatory relief.
Thus, the Court ruled in favor of Johnson & Johnson, granting a permanent injunction restraining the defendants from using the trademarks ‘SURGICEL’ and ‘ETHICON’ in any form. The court ordered:
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Compensatory damages of INR 2,34,82,986 to the plaintiff, representing 25% of the total sales revenue generated by the defendants from counterfeit products.
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Exemplary damages of INR 1,00,00,000 to deter similar infringing activities in the future.
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Destruction of all counterfeit products seized from the defendants’ premises.
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Recovery of actual litigation costs from the defendants.
The Court also directed the plaintiff to file a bill of costs within four weeks to determine the exact litigation expenses incurred.
[Johnson & Johnson v. Pritamdas Arora, CS(COMM) 570/2019, decided on 11-03-2025]
Advocates who appeared in this case:
Ms. Nancy Roy, Mr. Raghav Malik, Ms. Prakirti Varshney and Mr. Prashant, Advocates for plaitiff
None for defendants
