On June 13, 2024, the Bombay High Court granted Glenmark Pharmaceuticals Ltd. an interim injunction against Gleck Pharma Opc Pvt Ltd. The interim injunction was granted in a trademark case filed by Glenmark against Gleck Pharma with respect to Gleck Pharma’s diabetes product sold under the mark “XIGAMET”. Glenmark contended that Gleck Pharma’s trademark was infringing its registered trademark “ZITA-MET”.
Glenmark submitted in the case that its product, “ZITA-MET”, an anti-diabetic drug, had been on the market since 2013 and had gained significant goodwill. Glenmark further argued that the phonetic, structural, and visual similarities between “XIGAMET” and “ZITA-MET” would confuse consumers and potentially cause harmful side effects due to the different active ingredients in each drug.
The court agreed with Glenmark and stated that stricter standards of similarity apply to medicinal products because of the potential health risks associated with consumer confusion. It found that the similarities between the trademarks would lead to confusion among consumers though the drugs contained different active ingredients. The defendant’s arguments that the products are prescription-only and that the Court did not have jurisdiction, did not find favour with the Court.
The court applied the principles laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., and reiterated the importance of preventing consumer confusion in medicinal products due to the potential for serious health consequences. The court highlighted that the probability of confusion in medicinal products demands a stricter approach because confusion can result in severe health risks, including life-threatening situations. Stating that Glenmark had made a prima facie case of trademark infringement because of similarity of marks and products, the court granted Glenmark’s plea for an interim injunction, restraining Gleck Pharma from using the trademark “XIGAMET” pending the final disposal of the suit.
Pharma Trademark Principles: Paras from the Judgment
The paras from the Judgment that discuss principles relating to assessment of pharma trademark infringement have been extracted below.
“29. Heard learned Counsel for the parties and perused the documents on record. The main issue for my consideration is whether the impugned mark of the Defendant is deceptively similar to the trade mark of the Plaintiff. In this context, it would be useful to refer to paragraph 35 of the judgment of the Supreme Court in Cadila Health Care Ltd. (supra) which has listed the factors for deciding the question of deceptive similarity, which reads as under:
“35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:
a. The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works. b. The degree of resemblance between the marks, phonetically similar and hence similar in idea. c. The nature of the goods in respect of which they are used as trade marks. d. The similarity in the nature, character and performance of the goods of the rival traders. e. The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. f. The mode of purchasing the goods or placing orders for the goods and g. Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.”
30. Further what is the approach to be adopted whilst considering deceptive similarity in respect of marks used on medicinal products has been laid down by the Supreme Court in paragraph 33 of the Judgment in Cadila Health Care Ltd. (supra), which reads as under:
“33. The decisions of English Courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand. While English cases may be relevant in understanding the essential features of trade mark law but when we are dealing with the sale of consumer items in India, you have to see and bear in mind the difference in situation between England and India. Can English principles apply in their entirety in India with no regard to Indian conditions? We think not. In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know English, then to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiffs goods seems to overlook the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which have to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be at par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health.”
31. Further, the test in respect of medicinal products has been considered by the Delhi High Court in the case of Glenmark Pharmaceuticals Ltd. (Supra), wherein the Delhi High Court has taken note of the principles laid down in this regard by a Division Bench of this Court in Macleods Pharmaceuticals Ltd. vs. Union of India.7 Paragraph Nos.60 to 62 of the judgment of the Delhi High Court in Glenmark Pharmaceuticals Ltd. (supra) are relevant and read as under:-
32. We find that the aspect of heightened scrutiny was also emphasized by a Division Bench of the Bombay High Court in Macleods Pharmaceuticals. While enunciating the first principles which must be borne in mind, the Bombay High Court in paras 21 and 22 held as follows:
“21. This Court in the decision of Boots Company Plc. England (supra) after considering various judgments held that there are three tests which have to be considered for deciding the question whether the trade mark is deceptively similar to the other mark or not and they are:-
(1) The mark has to be considered as a whole, (2) It is a question of first impression and (3) The question has to be considered from the view point of a man of average intelligence.
22. The Delhi High Court in Win-Medicare Pvt. Ltd(supra) after considering the relevant decisions on the question of misrepresentation or deception between two trade marks held that following Rules of Comparison can be culled out from various pronouncements of the Courts from time to time: I. Meticulous Comparison not the correct way. II. Mark must be compared as a whole III. First Impression. W. Prima Facie view not conclusive. V. Structural Resemblance. VI. Similarity in Idea to be considered.”
23. The test of “exacting judicial scrutiny”, when we are called upon to deal with medicinal products was reiterated and re-affirmed as would be evident from para 23:
24. The Supreme Court in the decision between Milment Oftho Industries (supra) after reviewing the law on the subject held as follows: “8. In respect of medicinal products it was held that exacting judicial scrutiny is required if there was a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products. It was held that even though certain products may not be sold across the counter, nevertheless it was not uncommon that because of lack of competence or otherwise that mistakes arise specially where the trade marks are deceptively similar. It was held that confusion and mistakes could arise even for prescription drugs where the similar goods are marketed under marks which looked alike and sound alike. It was held that physicians are not immune from confusion or mistake. It was held that it was common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently the handwriting is not legible. It was held that these facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike. (Emphasis added)
25. After noticing the decision in Cadila Healthcare, the Bombay High Court culled out the following principles:
“25. The principles which are emerging from the decisions set out hereinabove are summarized in the following manner:
a. When a particular medicinal or a pharmaceutical product is involved as the impugned trade mark which may deceive the public or cause a confusion with respect to another trademark, it is the Court’s primary duty to take utmost care to prevent any such possibility of confusion in the use of trademarks. b. Confusion in case of a non-medicinal or a nonpharmaceutical product may only cause economic loss to the person, but on the other hand, a confusion in terms of medicinal or a pharmaceutical product may have disastrous effect on the health. Hence, it is proper to require a lesser quantum of proof of confusing similarity for such products. c. The Court may not speculate as to whether there is a probability of confusion between the marks. Mere existence of the slightest probability of confusion in case of medicinal product marks, requires that the use of such mark be restrained. d. While arriving at a conclusion with respect to the similarity and confusion between medicinal products, the same should be examined from the point of view of an ordinary common man of average intelligence instead of that of a specialized medicinal practitioner. Courts must decide the same from the view point of a man with average intelligence considering multiple factors such as the first impression of the mark, salient features of both the products, nature of the commodity, overall similarity and the possibility of the same creating a confusion amongst the public at large. e. The primary duty of the Court is towards the public and the purity of the register. Duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion. (f) The following rules of comparison can be culled out from various pronouncement of Court from time to time. i. Meticulous comparison is not the correct way. ii. Mark must be compared as whole. iii. First impression. iv. Prima facie view is not conclusive. v. Structural resemblance. vi. Similarity in idea to be considered. (g) The main object of maintaining trade mark register is that the public should know whose goods they are buying. It is therefore essential that the register should not contain the trade mark which is identical by which purchaser may likely to be deceived by thinking that they are buying the goods of a particular company/industry whereas he is buying the goods of another company/industry.”
32.On applying the aforesaid tests to the marks in question before me, I am of the view that the Defendant’s impugned mark “XIGAMET” is deceptively similar to the Plaintiffs registered trademark “ZITA-MET”. Firstly, both the marks are word marks. The two word marks are phonetically similar. They are structurally similar as they contain the same number of letters and syllables. Both the marks are used in respect of the same kind of products. This, by itself, makes the Defendants’ impugned mark deceptively similar to the Plaintiffs trade mark.
- Further, as held by the Supreme Court in Cadila Health Care Ltd. (supra), a stricter approach has to be adopted while applying the test of deceptive similarity to judge the possibility of confusion of one medicinal product from another by the consumer as, while the confusion in the case of non-medicinal products may only cause economical loss to the Plaintiff, confusion between two medicinal products may have disastrous effects on health, and, in some cases, on life itself. Further, as held by this Court in the case of Macleods Pharmaceuticals Ltd. (supra) and as referred to by the Delhi High Court in Glenmark Pharmaceuticals Ltd. (supra), when a particular medicinal or a pharmaceutical product is involved as the impugned trade mark which may deceive the public or cause a confusion with respect to another trade mark, it is the Court’s primary duty to take utmost care to prevent any such possibility of confusion in the use of trademarks, as a confusion in terms of medicinal or pharmaceutical products may have disastrous effects on the health of the consumer. Hence, it is proper to require a lesser quantum of proof of confusing similarity for such products. The Court is not to speculate as to whether there is a probability of confusion between the marks. Mere existence of the slightest probability of confusion in case of medicinal product marks requires that the use of such mark be restrained. Keeping these tests in mind, by virtue of the fact that the word mark “XIGAMET” of the Defendant is phonetically and structurally similar to the word mark “ZITA-MET” of the Plaintiff and the two marks are used on medicinal products, in my view the injunction sought by the Plaintiff in respect of Defendant’s mark is required to be granted. There can be no doubt that there is a probability of confusion in respect of both these marks.
- Further, as held by this Court and the Delhi High Court, while arriving at a conclusion with respect to the similarity and confusion between medicinal products, the same should be examined from the point of view of an ordinary man of average intelligence instead of that of a specialized medicinal practitioner.
- In my view, viewed from this angle, the mark “XIGAMET” of the Defendant is deceptively similar to the trademark “ZITA-MET” of the Plaintiff. The ordinary common man of average intelligence who would go to buy medicines is definitely going to be confused between the two marks and this is one more reason as to why the ad-interim injunction sought by the Plaintiff ought to be granted.”
Citation: Glenmark Pharmaceuticals Ltd. v. Gleck Pharma Opc Pvt Ltd., Interim Application (L) No. 30450 of 2023 in Commercial IP Suit (L) No. 30149 of 2023 (Bom. June 13, 2024). Available at: http://indiankanoon.org/doc/7700023/, Visited on: 06/19/2024.
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