The Plaintiff, Glaxo Group Limited, is a leading global healthcare company providing pharmaceutical and medicinal preparations since 1715, with a significant presence in over 150 countries including India. Glaxo has been selling medicinal products under the trademarks ‘AUGMENTIN’, ‘BETNESOL’, ‘BETNOVATE’, ‘FEFOL’ and ‘FEFOL- Z’. A table below lists out Glaxo’s registered marks in India:
On the other hand, the Defendant No. 1 Qpharm Health Care Limited was advertising and selling similar pharmaceutical products under deceptive marks, packaging and capsule trade dress, namely ‘BETNOTREAT’, ‘TOPMENTIN’ and ‘PIFOL- Z’. Glaxo approached the Court seeking protection for the packaging/trade dress ‘AUGMENTIN’, ‘BETNESOL’, ‘BETNOVATE’, ‘FEFOL’. Glaxo filed a suit against trademark infringement and passing off by Qpharm for various product names/marks as used by Glaxo. Glaxo also made Qpharm’s Director a party to the suit.
Early this year, Glaxo discovered Qpharm’s products under the marks – ‘BETNOTREAT’, ‘TOPMENTIN’ and ‘PIFOL- Z’ with similar packaging and capsule trade dress as those sold as ‘AUGMENTIN’, ‘BETNESOL’, ‘BETNOVATE’, ‘FEFOL’ and ‘FEFOL- Z’, being advertised and sold in Qpharm’s website www.qpharm.in as well as on third-party websites like IndiaMart. A comparison of the marks, packaging, and capsule designs used by both parties is provided below:
In an attempt to curb the circulation of products under the deceptively similar packaging/trade dress, Glaxo issued a legal notice to Qpharm on February 1st, 2024, followed up with few more reminders, all of which were futile as Qpharm did not respond. Thereafter, Glaxo sought legal recourse by initiating the present suit.
The Court observed that the packaging and capsule trade dress of Qpharm’s products sold under the marks ‘BETNOTREAT’, ‘TOPMENTIN’ and ‘PIFOL- Z’ were deceptively similar to the products sold by Glaxo under the marks ‘AUGMENTIN’, ‘BETNESOL’, ‘BETNOVATE’, ‘FEFOL’ and ‘FEFOL- Z’. Further, Qpharm sold its products through identical trade channels targeting the same class of consumers who avail the products of Glaxo. It was observed that Qpharm adopted the visually deceptive packaging and capsule trade dress with the knowledge of Glaxo’s prior existing products in the pharmaceutical industry considering the close similarity of the packaging/trade dress. Therefore, the Court noted that Glaxo would sustain irreparable loss if Qpharm’s products continued to be sold under deceptively similar packaging/trade dress.
As the balance of convenience was in Glaxo’s favour, the Court restrained Qpharm from using, manufacturing, selling, offering for sale and/or advertising any medicinal and pharmaceutical preparation under the deceptively similar packaging/trade dress. The Court further directed that Qpharm’s product listings under the marks ‘BETNOTREAT’, ‘TOPMENTIN’ and ‘PIFOL- Z’ with the deceptively similar packaging/trade dress be taken down from all third-party websites like IndiaMart within 72 hours of receiving a copy of the Court’s Order.
Citation: Glaxo Group Limited vs Qpharm Health Care Limited And Anr., High Court of Delhi, 3rd July, 2024 [CS(COMM) 534/2024].
Authored by Ms. Swathi Muthukumar, Trademark Team.
Reviewed and confirmed by Ms. Bhavishya B., IP Renewal and Maintenance Team.
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