The Hon'ble Bombay High Court in Glenmark Pharmaceuticals Ltd. v. Gleck Pharma (OPC) Pvt Ltd. & Ors., [Interim Application (L) No.30450 of 2023 in Commercial IP Suit (L) No.30149 of 2023, dated June 13, 2024,] granted an ad-interim injunction restraining the Defendants from using the trademark "XIGAMET" or any other mark deceptively similar to the Plaintiff's registered trademark "ZITA-MET" in relation to medicinal and pharmaceutical preparations.
Facts of the Case:
drug name trademark dispute
The Plaintiff, Glenmark Pharmaceuticals Ltd., is a company engaged in manufacturing, marketing, and selling pharmaceutical and medicinal preparations. One of their products is an anti-diabetic drug sold under the registered trademark "ZITA-MET". From April 2013 to January 2014, the chemical composition of this drug comprised the molecule SITAGLIPTIN. After 2015, the Plaintiff changed the molecule to Teneligliptin and Metformin.
The Plaintiff has secured trademark registrations for "ZITA-MET" and ZITA-MET formative trademarks in Class 5. Since 2013, the Plaintiff has been using this trademark extensively and has acquired substantial goodwill and reputation for its goods bearing the "ZITA-MET" trademark.
In August 2020, the Plaintiff discovered that Defendant No.1 had filed a trademark application for "XIGAMET" in Class 5 on a proposed to be used basis. The Plaintiff filed a Notice of Opposition against this application on August 17, 2020. The Defendant No.1 filed its Counter Statement but omitted to state the date from which it started using the impugned trademark. The opposition proceedings are still pending.
On April 18, 2023, Defendant No.1 filed evidence in support of its trademark application, which included purchase bills and invoices indicating the sale of medicinal preparations bearing the "XIGAMET" mark. The Plaintiff learned that Defendant Nos. 2, 3, and 4 were also selling goods bearing this mark along with Defendant No.1, who claims to be the proprietor of the impugned mark.
The Plaintiff sent cease and desist notices to the Defendants on May 30, 2023. Defendant No.1 replied on June 7, 2023, raising various defenses. In September 2023, the Plaintiff received a summons from the Court of the Third Additional Munsif, Srinagar, regarding a suit filed by Defendant No.1 against the Plaintiff for groundless threat action under Section 142 of the Trade Marks Act, 1999.
On October 26, 2023, the Plaintiff filed the present suit in the Bombay High Court. The Srinagar Court passed an order on February 19, 2024, granting a temporary injunction against the Plaintiff, restraining interference with the manufacturing, distribution, and sale of "XIGAMET". However, this order was made subject to any order passed by the Bombay High Court.
Issue:
Whether the Defendants should be restrained from using the trademark "XIGAMET" or any other mark deceptively similar to the Plaintiff's registered trademark "ZITA-MET" in relation to medicinal and pharmaceutical preparations?
Held by the Court:
The Court found that the Defendant's impugned mark "XIGAMET" is deceptively similar to the Plaintiff's registered trademark "ZITA-MET". Both marks are word marks, phonetically similar, and structurally similar, containing the same number of letters and syllables. They are used for the same kind of products.
The Court applied a stricter approach as mandated by the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. for medicinal products, noting that confusion between two medicinal products may have disastrous effects on health.
The Court observed that it is proper to require a lesser quantum of proof of confusing similarity for medicinal products, and mere existence of the slightest probability of confusion requires that the use of such mark be restrained.
The Court held that the similarity should be examined from the point of view of an
ordinary common man of average intelligence instead of a specialized medicinal practitioner.
The Court rejected the Defendants' argument that the present suit is an abuse of process, stating that the Plaintiff has filed the suit in exercise of its statutory right as a proprietor of a registered trademark.
The Court dismissed the Defendants' contention regarding lack of territorial jurisdiction, noting that Defendant No.1 has its registered office in Mumbai.
The Court found that the Defendants failed to provide any proper explanation for adopting the mark "XIGAMET", which suggests an intention to adopt a mark deceptively similar to the Plaintiff's "ZITA-MET".
The Court rejected the Defendants' argument about the dissimilarity in packaging, citing previous judgments that once deceptive similarity in trademarks is established, differences in packaging are irrelevant.
The Court dismissed the Defendants' contention that confusion is unlikely because the products are prescription medicines, noting that prescriptions have lost their significance in India and even doctors and chemists are not immune to confusion.
The Court held that the fact that both products are anti-diabetic preparations but contain different molecules actually strengthens the case for stricter scrutiny, as confusion could potentially cause harmful side effects on consumers.
Based on these findings, the Court granted ad-interim relief in favor of the Plaintiff, restraining the Defendants from using the trademark "XIGAMET" or any deceptively similar mark in relation to medicinal and pharmaceutical preparations.
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