FEDERAL COURT OF AUSTRALIA

Servier Laboratories (Australia) Pty Ltd v GenRx Pty Ltd [2006] FCA 1763     

COSTS – interlocutory injunction application – respondent about to market the generic equivalent of applicant’s product – respondent’s product only registered by Therapeutic Goods Administration for two of the three indications for which applicant’s product registered – subsequent to filing of application TGA registered third indication

Held:  No order as to costs

Oxford Funding Proprietary Limited v Oxford Asia Pacific Investments Proprietary Limited (No 2) [2006) FCA 1542 at [5] cited  

SERVIER LABORATORIES (AUSTRALIA) PTY LTD v GENRX PTY LTD

VID 1312 OF 2006

HEEREY J

30 NOVEMBER 2006

MELBOURNE

THE COURT ORDERS THAT:

1.                  The application be dismissed.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     The applicant is the owner of the therapeutic drug Coversyl (active ingredient - Perindopril) which has three registered indications for treatment: hypertension, chronic heart fatigue and coronary artery disease.  The respondent is the producer of perindopril erbumine products are the generic version of Coversyl. 

2                     The applicant claims that the respondent circulated advertising material promoting its products as a “genuine alternative” to Coversyl Perindopril, thereby representing that the products were substitutable for each of the three registered indications outlined above.  The Product Information for the Respondent’s products indicates that it is not an authorised indication for coronary artery disease (the applicant’s third registered indication).

3                     The respondent obtained a listing from the Pharmaceutical Benefits Scheme effective from 1 December 2006, which required the respondent to be in an immediate position to supply the market from that date.  The applicant sought an interlocutory injunction preventing the respondent from representing that its products were substitutable with Coversyl to treat coronary artery disease.

4                     Immediately prior to the scheduled commencement of the interlocutory hearing, the respondent had communication from the Therapeutic Goods Administration that its products had been registered for the third indication.  As such, the applicant no longer has a claim against the respondents for misleading and deceptive conduct.  Therefore, the only matter for me to decide is one of costs.

5                     The considerations which apply when a matter has otherwise been resolved but the parties seek an order for costs has recently been discussed by me in Oxford Funding Proprietary Limited v Oxford Asia Pacific Investments Proprietary Limited (No 2) [2006) FCA 1542 at par [5].   

6                     In the present case the dispute arose in circumstances of great urgency.  The parties are fierce trade rivals, and understandably concerned to protect their commercial interests.  The Court should not be too ready to dictate in hindsight a particular course of conduct which the parties could or should have taken. 

7                     I think the applicant acted reasonably in initiating proceedings to forestall what was arguably, in its view, misleading and deceptive conduct by the respondent which could be seriously damaging.  The respondent, on the other hand, proffered firm assurances which would meet the applicant's concerns.  As events have turned out, those assurances have been substantiated.  It is possible that the respondent might have offered more corroborating detail in its letter of today's date.  However, that was a matter for judgment which had to be made quickly and under pressure.  Given its legitimate concern about confidentiality of dealings with the Therapeutic Goods Administration, I do not think that the respondent acted unreasonably, although it might have acted differently.

8                     In the circumstances, I do not propose to make any order as to costs.  The substantive application will be dismissed.

Associate:

Dated:         30 November 2006