The Bombay High Court recently granted an ad-interim injunction in favour of the plaintiff in a trademark infringement case of Glenmark Pharmaceuticals Ltd. vs. Gleck Pharma (OPC) Pvt Ltd. & Ors. The plaintiff is a company engaged in manufacturing, marketing, and selling pharmaceutical preparations under the trademark “ZITA-MET”, registered in class 5 for anti-diabetic drugs. The plaintiff’s drug bearing the said trademark was comprised of the molecule Sitagliptin, which was later changed to Teneligliptin and Metformin. The plaintiff also claimed to have used their trademark since 2013. In August 2020, the plaintiff discovered the impugned trademark “XIGAMET” filed by the Defendant in February 2020 on a “proposed to be used” basis.
The defendant also manufactured and sold anti-diabetic drugs under the said trademark comprising the molecule Teneligliptin. Further, in August 2020, the plaintiff filed an opposition against the impugned application. In a surprising turn of events, Defendant No. 1 filed a suit in the Court of Srinagar under Section 142 of the Trade Marks Act, 1999 (“the Act”) for a groundless threat against the plaintiff. By an ex-parte order, the Srinagar Court passed a temporary injunction against the plaintiff, restraining them from interfering with the manufacturing, distribution and sale of the defendant’s product “XIGAMET”. Subsequently, the Srinagar Court discontinued the order.
The plaintiff in the present case submitted that from a bare perusal of the two rival marks, there is no manner of doubt that the rival marks are phonetically, aurally and visually similar. It was further submitted that both the marks contained an exact number of letters and syllables, further leading to the likelihood of confusion amongst the general public. The plaintiff relied on several landmark judgements, including Cadila Health Care Ltd. Vs Cadila Pharmaceuticals Ltd., wherein it was observed that where medicinal products were involved, the test to be applied for assessing the violation of trade mark law was not the same as in cases involving non-medicinal products and that the Court needs to apply a stricter approach to adjudge the possibility of slightest of confusion between two marks. The plaintiff also denied the attempt of the defendant to dissect the plaintiff’s trade mark “ZITA-MET” into “ZITA” and “MET” and the impugned trade mark “XIGAMET” into “XIGA” and “MET” and stated that the same was violative of the anti-dissection rule. The plaintiff further placed emphasis on the fact that the goods sold under both sets of rival marks were anti-diabetic drugs used for treating the same ailment, and confusion between the said drugs could potentially cause harmful side effects on the consumers.
On the other hand, the defendant submitted that the present case was not maintainable on the grounds of multiplicity of proceedings and abuse of law. The Defendants also claimed that this Court did not have jurisdiction to adjudge the case as the Defendants were not manufacturing, selling, or stocking their products within the territorial jurisdiction of this Court. The defendant further submitted that various medicines were being sold in the market with the suffix “met”. The defendant while relying on various judgements also pointed out one such drug named “Sitamet” being sold with the exact combination as that of the plaintiff’s drug and a prior registration than the plaintiff. Further, during the course of the pleadings filed in the opposition matter, the defendant failed to disclose the first date of use of the impugned trademark “XIGAMET”. However, when the defendant filed its evidence in support of its application, the plaintiff observed that the Defendants were selling medicinal preparations bearing the impugned trademark.
The Court primarily relied on the Cadila case and held that the defendant’s impugned mark “XIGAMET” was deceptively similar to the plaintiff’s registered trademark “ZITA-MET”. Firstly, both the marks were word marks which were phonetically and structurally similar as they contained the same number of letters and syllables. Further, the goods under both the marks were also used in respect of the same kind of products. The Court also observed that it was not to speculate as to whether there was a probability of confusion between the marks. The mere existence of the slightest probability of confusion in the case of medicinal product marks required that the use of such marks be restrained.
Thus, the Court granted an ad-interim injunction to the plaintiff. The Court also held that no question of abuse of power or maintainability of the present case arose. The Court further stated that it is the Defendants who have failed to showcase bona fide intention to adopt the impugned mark. The Court also relied upon the case of Medley Laboratories (P) Ltd., Mumbai and Ors. Vs Alkem Laboratories Limited and observed that once the Court concludes that the rival trademarks were deceptively similar, the other factors, viz. the packing being different, the number of tablets contained in the competing packaging were not the same, prices were not identical and/or the goods being sold on doctor’s prescription were altogether irrelevant and immaterial.
Authors: Manisha Singh and Garima Chopra
First Published by: Lexology here