Bayer Intellectual Property GMBH and others v New Clicks South Africa (Pty) Ltd and others
| Jurisdiction | http://justis.com/jurisdiction/166,South Africa |
| Judge | Collis J |
| Judgment Date | 07 June 2023 |
| Citation | 2023 JDR 2024 (COP) |
| Hearing Date | 07 April 2022 |
| Docket Number | 2022/8099 |
| Court | Commissioner of Patents |
Collis J:
INTRODUCTION
2023 JDR 2024 p3
Collis J
On 7 February 2021, the Applicants (Bayer) issued out of the Court of the Commissioner of Patents an urgent application seeking the following relief:
That the forms and service provided for in the Uniform Rules of Court are dispensed with and it is directed that the application be enrolled and heard as one of urgency.
Pending the final determination of the patent infringement action which has been instituted by the applicants against Dr. Reddy's Laboratories (Pty) Ltd in respect of South African Patent No. 2007/06238 or the dismissal of the applicants' application to join the respondents as defendants in that action, the respondents are interdicted and restrained from infringing the claim of South African Patent No. 2007/06238 by disposing of or offering to dispose of the product Rivaxored (or any other product falling within the scope of the claim of the patent) in the Republic and by importing any such product into the Republic.
The respondents are ordered to pay the cost of this application, including the costs of counsel, jointly and severally, the one paying the other to be absolved."
2023 JDR 2024 p4
Collis J
The urgent relief sought by the applicants is in the form of an interim interdict preventing the consequential infringement of South African patent 2007/062381 [1] (the Patent) occasioned through the sale and offer for sale of an anticoagulant drug called Rivaxored.
The urgent relief is sought pending the outcome of a trial action.
The application was initially issued against three respondents. Insofar as it relates to second and third respondents, it was later settled on the basis that the pharmacies would cease selling Rivaxored pending the outcome of the trial. [2]
The application against the second and third respondents was as a result withdrawn, [3] and proceeded only against the first respondent on the basis of its alleged refusal to cease its infringing conduct.
2023 JDR 2024 p5
Collis J
URGENCY
Rule 6(12)(b) provides as follows:
In every affidavit or petition filed in support of the application under the application under para. (a) of this sub-rule, the applicant shall set forth explicitly the circumstances which he avers render the matter urgent and the reasons why he claims that he could not be afforded substantial redress at the hearing in due course."
In paragraph 15 of its Founding Affidavit, deals with the basis for urgency relied upon by the applicants in their application. In this regard the applicants assert that during December 2021, Keightley J granted an interim interdict against Dr. Reddy, the company that imports Rivaxored into South Africa to sell it to pharmaceutical wholesalers and retailers.
In terms of the interdict so granted, the court had found that the patent was prima facie valid and that the sale of Rivaxored in South Africa constituted a prima facie infringement of the patent. [4] This judgment of Keightley J has not been taken on appeal.
2023 JDR 2024 p6
Collis J
In addition the court had found that the continued sale of Rivaxored in South Africa gave rise to irreparable harm to Bayer in that it would not be able to prove the full extent of its damages occasioned by these sales; that Bayer had no alternative remedy available to it; [5] and that the balance of convenience in the circumstances of that case favoured Bayer. [6]
Notwithstanding the above findings, and the order granted against Dr Reddy's, UPD and Clicks Retailers (together "Clicks") refused to stop selling Rivaxored pending the outcome of the trial against Dr Reddy's. [7]
Clicks' continued sale of Rivaxored, the applicants argues, undermines the purpose of the interim interdict granted by Keightly J against Dr Reddy's; and gives rise to precisely the same irreparable harm to Bayer that it sought to prevented by that order. [8]
2023 JDR 2024 p7
Collis J
Indeed, the very purpose of the order granted against Dr Reddy's, in an urgent application, is being defeated by Clicks. [9] This conduct, by Clicks after the granting of the interim interdict against Dr Reddy's, [10] warranted the bringing of a separate, urgent application against Clicks and only once the intention of Clicks was made clear did the applicants move with all reasonable expedition in instituting this application.
Moreover, while it is conceded that Clicks is not bound by the order against Dr Reddy's and there is therefore no question of contempt, their conduct clearly undermines the authority of the court to prevent unlawful commercial conduct in the same way that contemptuous conduct does. Simply put, Clicks has shown scant regard for the findings of this court: it is quite content to continue selling a product, the sale of which this court has already found to be prima facie unlawful and based on this reason alone, it renders the matter urgent.
2023 JDR 2024 p8
Collis J
The first respondent disputes that the application is urgent. The position adopted by the first respondent is that the urgency of the application is self-created. This the first respondent asserts, is so, as the applicants only waited until the judgment by Keightley J was handed down, before approaching this court on an urgent basis seeking an interdict against New Clicks South Africa (Pty) Ltd (NCSA), without providing any reason as to why NCSA was not cited in the Dr. Reddy's matter.
In finding support for the argument of self-created urgency the respondent relied on the decision of Lindeque v Hirsch, [11] where Adams J held:
"As rightly pointed out by Mr Subel, self-created urgency does not constitute acceptable urgency for purposes of uniform rule 6(12) justifying the determination of a matter on an urgent basis."
The first respondent further asserts that the applicants could further be afforded substantial redress in due course and have delayed in approaching this court.
2023 JDR 2024 p9
Collis J
If this application were to be heard on the ordinary roll, the first respondent had argued that NCSA's limited stocks of Rivaxored would by then have been distributed to Clicks pharmacies, and most likely sold.
This however would not mean that the applicants would not be able to obtain substantial redress in due course. Should they be successful in their pending action, they would be entitled either to damages, or should quantification prove impossible (as they allege), a reasonable royalty in lieu of damages. [12]
That being said, it is trite that "[r]ule 6(12) confers a general judicial discretion on a court to hear a matter urgently". [13] In Mogalakwena Local Municipality v Provincial Executive Council, Limpopo, Tuchten J set out the considerations that a court ought to take into account when exercising that discretion:
"It seems to me that when urgency is in issue the primary investigation should be to determine whether the applicant will be afforded
2023 JDR 2024 p10
Collis J
substantial redress at a hearing in due course. If the applicant cannot establish prejudice in this sense, the application cannot be urgent.
Once such prejudice is established, other factors come into consideration. These factors include (but are not limited to): whether the respondents can adequately present their cases in the time available between notice of the application to them and the actual hearing, other prejudice to the respondents and the administration of justice, the strength of the case made by the applicant[,] and any delay by the applicant in asserting its rights. This last factor is often called, usually by counsel acting for respondents, self-created urgency."
This Court aligns itself with what has been stated in the judgment quoted above. Considering what has been presented before this Court on urgency, it seems to me that irreparable harm will potentially be suffered by the applicants with any delay in asserting their rights - that is if the application is not dealt with in the urgent court. Given that the alleged infringing conduct has not been stopped or ceased after Keightley handed down her judgment, I find that there is justification in enrolling this application in the urgent court.
2023 JDR 2024 p11
Collis J
For the above reasons, I am inclined in exercising my judicial discretion to enroll the application as an urgent application in terms of Rule 6(12)(c) of the Uniform Rules of Court. The first issue for adjudication prior to dealing with the merits of the interdict, concerns the question of joinder.
JOINDER OF CLICKS RETAILERS (PTY) LTD
In and around March 2022 the applicants have simultaneously with the Replying Affidavit, served a Notice to amend the Notice of Motion, specifically seeking to join Clicks Retailers (Pty) Ltd as the fourth respondent in these proceedings. [14]
The applicants contend that the amendment was as a result of new facts that came to light, namely that contrary to what Bayer understood at the time of filing its application and as alleged in its founding affidavit, [15] it established that, while the first respondent operates Clicks' group's pharmaceutical wholesaling business known as "UPD", [16] it does not operate "Clicks" stores, the retail pharmacy business of the Clicks group. [17] The latter business is
2023 JDR 2024 p12
Collis J
operated by a separate company within the Clicks group called Clicks Retailers (Pty) Ltd.
On this basis Bayer has applied, to join Clicks Retailers (Pty) Ltd as the fourth respondent in this application. [18]
In support of the joinder of Clicks Retailers...
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