What happens when two pharmaceutical products with different compositions have nearly identical trademarks? The Bombay High Court recently ruled in favour of Glenmark Pharmaceuticals Ltd. (Plaintiff), granting an ad-interim injunction against Gleck Pharma (OPC) Pvt Ltd (Defendant). The Plaintiff’s trademark ‘ZITA-MET’ is registered under various classes and is used for medicinal and pharmaceutical preparations. The Defendant’s mark ‘XIGAMET’ is alleged to be phonetically and visually similar to the Plaintiff’s mark, which could cause confusion among consumers. The Court determined that the Defendant’s ‘XIGAMET’ trademark bore a phonetic and structural resemblance to the Plaintiff’s ‘ZITA-MET’, indicating a significant likelihood of consumer confusion.
Case Background
The Plaintiff is a manufacturer of the anti-diabetic drug ‘ZITA-MET’. In 2013, the Plaintiff obtained trademark registration for the word mark ‘ZITA-MET’ and related formative trademarks in Class 5. In August 2020, the Plaintiff discovered that the Defendant had applied for registration of the trademark ‘XIGAMET’ with the Trade Marks Registry in Class 5 and accordingly it filed an opposition notice. Subsequently, the Plaintiff found evidence of the Defendant’s purchase bills and invoices, revealing that the Defendant was selling medicinal preparations under the trademark ‘XIGAMET’ and issued a cease-and-desist notice in May 2023. In response, the Defendant initiated legal action against the Plaintiff for groundless threats under Section 142 of the Trade Marks Act, 1999 before the Srinagar Court. The same resulted in a temporary injunction against the Plaintiff in June 2023, preventing any interference with the Defendant’s manufacturing, distribution, and sales of its products. The Plaintiff filed an interim application in a Commercial IP Suit before the Bombay Hight Court, seeking to restrain the Defendant from using the trademark ‘XIGAMET’ in medicinal preparations and from using any other mark that could be misleadingly similar to ‘ZITA-MET’.
Legal Issues:
1. Whether the Defendants’ use of ‘XIGAMET’ infringes on the Plaintiff’s registered trademarks ‘ZITA-MET’.
2. Whether the marks ‘ZITA-MET’ and ‘XIGAMET’ are deceptively similar to cause confusion among consumers, particularly in the context of medicinal products.
Contentions Of Both Parties
The Plaintiff argued that the trademarks ‘ZITA-MET’ and ‘XIGAMET’ exhibit phonetic, auditory, visual, and deceptive similarities. The Plaintiff further contended that the Defendant’s attempt to dissect ‘ZITA-MET’ into ‘ZITA’ and ‘MET’ and ‘XIGAMET’ into ‘XIGA’ and ‘MET’ violated the anti-dissection rule and was deemed impermissible. Additionally, the Plaintiff highlighted that both trademarks were utilized for anti-diabetic medications targeting the same medical condition and consumer base.
The Defendant contended that the brand ‘XIGAMET’ differed visually in terms of appearance, initial letters, and the presence of a hyphen compared to the Plaintiff’s trademark. Additionally, the Defendant highlighted that the pronunciation of “IG” in its brand was distinct from the pronunciation of “IT” in the Plaintiff’s mark. Moreover, it was pointed out that the Plaintiff’s product contained sitagliptin, while the Defendant’s product contained teneligliptin, indicating that the two drugs belonged to different classes and were distinct at the molecular level. However, the Plaintiff underscored that confusion among consumers regarding these drugs could potentially result in adverse side effects.
Analysis & Court’s Decision
The Court in this case referenced the legal precedent established in Cadila Health Care Ltd vs Cadila Pharmaceuticals Ltd, where the Supreme Court outlined the factors for identifying deceptive similarity, specifically in the context of trademarks for medicinal products. The Supreme Court highlighted that even the slightest possibility of confusion in the case of trademarks for medicinal products necessitates the restriction of the usage of such marks. Accordingly, the Court found that the Defendant’s mark would lead to confusion for the consumer base thereby resulting in serious repercussions.
Additionally, the Court noted that a significant number of consumers of medicinal products in India might lack proficiency in the English language or the language in which the trademark is written. Consequently, to such consumers, words with minor spelling discrepancies may sound phonetically identical. From the perspective of an ordinary individual, the Court determined that the Defendant’s mark was deceptively similar to the Plaintiff’s trademark. The Court also relied on the order in Glenmark Pharmaceuticals Ltd. v. Sun Pharma Laboratories, where the Delhi High Court emphasized the importance of the initial impression of the mark and the viewpoint of an ordinary individual in assessing the deceptive similarity of trademarks.
The Court also noted that the Defendant failed to provide a satisfactory explanation for choosing the mark “XIGAMET,” suggesting a malafide intention to create a deceptively similar mark to “ZITA-MET. The Court referred to the case of Medley Laboratories (P) Ltd. v. Alkem Laboratories Ltd, which stated that the availability of Schedule-H drugs in India, which are meant to be sold only with a prescription, were commonly found over the counter. Consequently, the Court rejected the Defendant’s argument that the prescription-only requirement for these drugs would prevent confusion among consumers. Given that both products treat the same medical condition and the confusion between ‘ZITA-MET’ (containing sitagliptin) and ‘XIGAMET’ (containing teneligliptin) could lead to harmful side effects.
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. It stated that the Plaintiff had made a prima facie case of trademark infringement due to the deceptive similarity of the marks and related products. Therefore, the Court ruled in favour of the Plaintiff, granting ad-interim relief against the Defendant.
Conclusion
The case of Glenmark Pharmaceuticals Ltd. v. Gleck Pharma (OPC) Pvt Ltd. & Ors. represents a significant development in the field of trademark law and consumer protection in the pharmaceutical sector. By prioritizing the viewpoint of the ordinary consumer and highlighting the importance of clear and distinct branding, the Court has emphasized the importance of preventing deceptive practices and ensuring public safety. The case underscores the importance of protecting trademarks, especially in the pharmaceutical industry, where consumer confusion can have serious health implications. The court’s decision reinforces the principle that even a slight possibility of confusion between medicinal products warrants stringent judicial measures to prevent any potential harm. This ruling serves as a reminder to pharmaceutical companies of their responsibility to maintain ethical standards and protect consumer interests through responsible branding practices.
Authors: Shalini Bajpai, Ambika Chaudhary & Devanshi Damania