The court established that the sale of counterfeit medical devices constitutes a grave offense endangering public health, warranting both compensatory and exemplary damages.

JUDGMENT :

AMIT BANSAL, J.

1. The present suit has been 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.

CASE SETUP IN THE PLAINT

2. Plaintiff [Johnson and Johnson], a company organised and existing under the laws of New Jersey, United States of America, is engaged in manufacturing consumer healthcare products, medical devices and pharmaceutical products. It is stated that the plaintiff has more than two hundred thirty (230) subsidiaries and employs more than one lakh thirty thousand (1,30,000) employees with presence in over sixty (60) countries.

3. Plaintiff’s business is diversified into three segments, namely, consumer healthcare products, pharmaceuticals, and medical devices. In 1949, the plaintiff acquired ‘Ethicon Suture Laboratories’, later renamed to ‘Ethicon Inc’ which manufactures inter-alia, surgical sutures, bleeding management and wound-closing devices.

4. Plaintiff, through its subsidiary Ethicon, manufactures medical devices used for bleeding management and sells them under the trade marks ‘SURGICEL’ and ‘ETHICON’.

5. The plaintiff coined the term ‘SURGICEL’ in 1957 in relation to a sterile absorbable knitted fabric hemostat. In 1960, the plaintiff introduced first oxidized regenerated cellulose hemostat under the trade mark ‘SURGICEL’ for controlling bleeding in certain critical surgical procedures. The plaintiff has been using the ‘SURGICEL’ marks in respect of its products in India since the 1990s.

6. The products sold under the ‘SURGICEL’ marks are manufactured in the plaintiff’s state-of-the-art facilities, which have quality control, specialised equipment and consistent processes which make the products reliable for surgeons.

7. In addition to the marks, the plaintiff has also adopted a unique trade dress to distinguish its ‘SURGICEL’ branded products. Through extensive use, the trade dress is exclusively and closely associated by consumers with the plaintiff.

8. The mark ‘ETHICON’ is the house mark of the plaintiff, which is used by the plaintiff on its products packaging, as shown below:

9. Plaintiff has also obtained trade mark registrations for its marks ‘SURGICEL’ and ‘ETHICON’, in multiple jurisdictions including India. The first trade mark registration for the mark ‘SURGICEL’ was obtained by the plaintiff on 3^rd March, 1958. The aforesaid registration certificate obtained by the plaintiff has been exhibited as Exhibit PW 1/5. The details of the registration obtained by the plaintiff in India for its ‘SURGICEL’ marks have been exhibited as Exhibit PW 1/7 (colly) and Exhibit PW 1/8, and the same is reproduced below:

10. The plaintiff, through its subsidiary, has also obtained registration for its mark ‘ETHICON’ and its formative marks across multiple jurisdictions including India. The details of the registration obtained by the plaintiff in India for its ‘ETHICON’ marks have been exhibited as Exhibit PW 1/9 (colly), and the same is reproduced below:

Trade Mark	Reg. No.	Reg. Date	Class
ETHICON	2405710	04.10.2012	10
ETHICON	168857	02.05.1985	5
ETHICON	261309	16.12.1969	5
ETHICON EVITHROM	1559133	16.05.2007	5
ETHICON OMNEX	2491153	07.03.2013	5
ETHICON PDS	410257	06.09.1983	10
ETHICON ENDO- SURGERY	1947721	08.04.2010	10
ETHICON PHYSIOMESH	2798059	26.08.2014	10

11. It is stated that the products sold under the plaintiff’s marks ‘SURGICEL’, ‘LIGAGLIP’ and ‘ETHICON’ are renowned and the same is evidenced from the revenue generated by these products over the years. The details of the revenue generated by plaintiff’s products sold under the marks ‘SURGICEL’, ‘LIGAGLIP’ and ‘ETHICON’ have been exhibited as Exhibit PW 1/11.

12. In 2019, a neurosurgeon at the University of Kentucky Medical Center, United States of America (hereinafter referred to as ‘University of Kentucky’), observed certain irregularit