Bombay High Court: Drugs Having Identical Trademarks For Treating Same Ailment, But Comprising Different Compositions, Are Deceptive

Bombay High Court: Drugs Having Identical Trademarks For Treating Same Ailment, But Comprising Different Compositions, Are Deceptive

Cites the judgments of the Supreme Court and the Delhi High Court in previous cases

The Bombay High Court has held that a structurally and phonetically similar trademark cannot be registered for a drug treating a similar ailment but having a different composition of an already registered mark.

The single-judge bench of Justice Firdosh P. Pooniwalla added that it could confuse the consumers and lead to potential side effects.

Glenmark Pharmaceuticals (plaintiff) manufactures, markets and sells pharmaceutical and medicinal preparations. Its anti-diabetic drug is sold under the registered trademark ‘Zita-Met’.

Glenmark had applied for and secured the trademark registration in Class 5 in 2013.

However, in August 2020, it came across the Trademark application of Gleck Pharma (opc) Pvt Ltd (defendant) before the Trade Marks Registry for ‘Xigamet’ in Class-5. It immediately filed a Notice of Opposition before the Trade Marks Registry opposing Gleck’s application for the registration.

In April 2023, Gleck filed the evidence supporting the trademark application in the opposition proceedings.

Meanwhile, Glenmark came across purchase bills and invoices, which indicated that Gleck was selling medicinal preparations bearing the trademark ‘Xigamet’.

In May 2023, Glenmark issued a cease-and-desist notice upon Gleck.

Thereafter, in September 2023, Gleck filed a suit before a Srinagar court against Glenmark for groundless threat action.

The court passed a temporary injunction against Glenmark, restraining it from interfering with the manufacturing, distribution and sale of Gleck's product, ‘Xigamet’.

Aggrieved by the situation, Glenmark filed an interim application in Commercial IP Suit for restraining Gleck from using the trademark ‘Xigamet’ in medicinal preparations and from using any other mark deceptively similar to ‘Zita-Met’.

Glenmark contended that ‘Zita-Met’ and ‘Xigamet’ were phonetically, aurally, visually and deceptively similar. It added that Gleck had attempted to dissect Glenmark's trademark into ‘Xiga’ and ‘Met’. This was impermissible and violated the anti-dissection rule.

The Company added that ‘Zita-Met’ and ‘Xigamet’ were anti-diabetic preparations used for treating the same ailment. While Glenmark's goods contained the molecule sitagliptin, Gleck's goods contained the molecule teneligliptin. Hence, both drugs were different classes and at the molecular level, very different from each other. Therefore, any confusion by the consumers between the drugs could potentially cause harmful side effects.

However, Gleck argued that its product was distinct from Glenmark’s product. The two marks were distinctive, as the words were visually, phonetically and aurally distinct.

Gleck added that its mark was distinct because of the appearance, the starting letters and the hyphen between Glenmark's mark. The letter ‘ig’ in its mark was aurally completely different from the Glenmark, which used the letters ‘it’. Gleck added that the common usage of the suffix ‘met’ was used industry-wide across the globe in medicines having the ingredient metformin.

Justice Pooniwala observed that both ‘Zita-Met’ and ‘Xigamet’ were structurally similar, as they contained the same number of letters and syllables. The mark used on medicinal products was also phonetically and deceptively similar.

The bench cited the Cadila Health Care Ltd vs Cadila Pharmaceuticals Ltd case, wherein the Supreme Court held that a lesser quantum of proof required determining confusing similarities for medicinal products, as it could have a disastrous effect on the consumer’s health. Even the slightest probability of confusion in a medicinal product mark required restraining.

The court noted that most medicinal product purchasers in India may have no knowledge of the English language or the way the trademark was written. To them, different words with slight differences in spellings may phonetically sound the same.

It also cited the Glenmark Pharmaceuticals Ltd vs Sun Pharma Laboratories case, wherein the Delhi High Court had held that the first impression of the mark and the viewpoint of a person of average intelligence played an important role in determining deceptively similarity of the trademark.

The single-judge bench noted that the rival products were meant for the same ailment but had different molecular compositions. Therefore, any confusion between the drugs sold by Glenmark and Gleck could potentially cause harmful side effects on the consumers.

Thus, the court granted the injunction sought by Glenmark related to Gleck's mark.