Bombay High Court Grants Injunction In Trademark Dispute Between Glenmark Pharmaceuticals And Gleck Pharma

Bombay High Court Grants Injunction In Trademark Dispute Between Glenmark Pharmaceuticals And Gleck Pharma

In a notable ruling, Justice Firdosh Pooniwalla of the Bombay High Court granted an ad-interim injunction to Glenmark Pharmaceuticals Ltd., restraining Gleck Pharma (OPC) Pvt. Ltd. from using the mark "XIGAMET." The court found that "XIGAMET" was phonetically and structurally similar to Glenmark’s registered Trademark "ZITA-MET," which is used for anti-diabetic drugs.

Glenmark Pharmaceuticals, a major player in the pharmaceutical industry, markets its anti-diabetic drug under the trademark "ZITA-MET." Originally, the drug's chemical composition included 'Sitagliptin,' but since 2015, it has used 'Teneligliptin' and 'Metformin.' Glenmark secured the trademark registration for "ZITA-MET" and related marks in Class 5.

In 2020, Glenmark discovered Gleck Pharma's application for the mark "XIGAMET" in Class 5, prompting Glenmark to issue a cease-and-desist notice in 2023. Subsequently, Glenmark was served with a summons from the Court of the Third Additional Munsif, Srinagar, where Gleck Pharma had filed a suit claiming a groundless threat under Section 142 of the Trade Marks Act, 1999. The Srinagar Court initially granted a temporary injunction against Glenmark on June 13, 2023, which was later not continued on October 21, 2023. On February 19, 2024, the Srinagar Court issued a new temporary injunction against Glenmark, subject to any orders from the Bombay High Court.

The Bombay High Court assessed whether "XIGAMET" was deceptively similar to "ZITA-MET" using criteria established in the Supreme Court case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. The Court noted that both marks were phonetically similar and structurally alike, featuring the same number of letters and syllables, and both were used for medicinal products.

Justice Pooniwalla emphasized that the confusion between medicinal products could have severe consequences for consumer health. Given the similarity and the potential for confusion, the Court found that the ad-interim injunction was warranted. The Court highlighted that even minimal confusion could lead to significant health risks, underscoring the need for stringent measures to prevent such outcomes.

The Court rejected the defendant’s argument that differences in packaging would prevent confusion. It also dismissed the claim that the prescription-only status of the products would mitigate the risk of consumer confusion, referencing previous case law where the significance of prescriptions had diminished in India.

The Court ruled in favor of Glenmark, granting the ad-interim injunction and restraining Gleck Pharma from using "XIGAMET" until the final resolution of the case. This decision reflects a strong stance on protecting trademarks in the pharmaceutical sector to avoid potentially harmful confusion among consumers.