Bombay High Court: Firdosh Pooniwalla, J., held that the ad-interim injunction sought by plaintiff, Glenmark Pharmaceuticals Ltd., in respect of defendants’, Gleck Pharma (OPC) Pvt. Ltd. mark was required to be granted as the word mark “XIGAMET” of defendant was phonetically and structurally similar to the word mark “ZITA-MET” of plaintiff and the two marks were used on medicinal products and there could be no doubt that there was a probability of confusion in respect of both these marks.
Background
Plaintiff was a company engaged in the business of manufacturing, marketing, and selling pharmaceutical and medicinal preparations and one of its products was an anti-diabetic drug sold under the registered trade mark “ZITA-MET”. From April 2013 to January 2014, the chemical composition of plaintiff’s drug comprised of the molecule ‘Sitagliptin’. After 2015, plaintiff changed the molecule from ‘Sitagliptin’ to ‘Teneligliptin’ and ‘Metformin’. Plaintiff secured trade mark registration for the word mark “ZITA-MET” and ZITA-MET formative trade marks in Class 5.
In 2020, plaintiff came across the impugned trade mark application filed by Defendant 1 before the Trade Marks Registry for the impugned trade mark “XIGAMET” in Class 5 on a proposed to be used basis. In 2023, plaintiff issued a Cease-and-Desist notice upon defendants. In and around September 2023, plaintiff received summons from the Court of the Third Additional Munsif, Srinagar (‘Srinagar Court’), whereby it came to know that Defendant 1 had filed a Suit against it for groundless threat action under Section 142 of the Trade Marks Act, 1999.
By an ex-parte Order dated 13-06-2023, the Srinagar Court passed a temporary injunction against plaintiff restraining it from interfering with the manufacturing, distribution, and sale of defendant’s product “XIGAMET”. Further by an Order dated 21-10-2023, the Srinagar Court did not continue the injunction granted by its ex-parte Order dated 13-06-2023. On 26-10-2023, plaintiff filed the present suit before this Court. On 19-02-2024, the Srinagar Court passed an Order disposing of Defendant 1’s Interim Application and passed a temporary injunction against plaintiff restraining it from in any manner interfering with the manufacturing, distribution, and sale of “XIGAMET” until the final disposal of suit before the Srinagar Court. However, in the said Order dated 19-02-2024, the Srinagar Court observed that it would be subject to any order that might be passed by this Court.
Analysis, Law, and Decision
The issue for consideration was “whether the impugned mark “XIGAMET” of defendant was deceptively similar to the trade mark “ZITA-MET” of plaintiff?”.
The Court relied on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 (‘Cadila Health Care Ltd. Case’), wherein the Supreme Court listed the factors for deciding the question of deceptive similarity and laid down the approach that had to be adopted while considering deceptively similarity in respect of marks used on medicinal products. The Court also relied on Glenmark Pharmaceuticals Ltd. v. Sun Pharma Laboratories, 2024 SCC OnLine Del 2707, wherein the Delhi High Court took note of the principles laid down in this regard by a Division Bench of this Court in Macleods Pharmaceuticals Ltd. v. Union of India, 2023 SCC OnLine Bom 408.
The Court opined that defendant’s impugned mark “XIGAMET” was deceptively similar to plaintiff’s registered trade mark “ZITA-MET” as both the word marks were phonetically similar and were also structurally similar as they contained the same number of letters and syllables, and both the marks were used in respect of the same kind of products.
The Court stated that as held by the Supreme Court in Cadila Health Care Ltd. Case (supra), a stricter approach must 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 might only cause economical loss to plaintiff, confusion between two medicinal products might have disastrous effects on health, and, in some cases, on life itself.
The Court opined that mere existence of the slightest probability of confusion in the case of medicinal product marks required that the use of such mark be restrained. Thus, the Court held that the ad-interim injunction sought by plaintiff in respect of defendant’s mark was required to be granted as the word mark “XIGAMET” of defendant was phonetically and structurally similar to the word mark “ZITA-MET” of plaintiff and the two marks were used on medicinal products and there could be no doubt that there was a probability of confusion in respect of both these marks. The Court opined that the ordinary person of average intelligence who would go to buy medicines was going to be confused between the two marks.
The Court opined that since defendants failed to give any proper explanation for adopting the mark “XIGAMET”, it clearly showed that it was the intention of defendants to adopt a mark deceptively similar to “ZITA-MET” of plaintiff. The Court relied on Cadila Health Care Ltd. Case (supra), wherein it was observed that that, if the essential features of the trade mark of plaintiff had been adopted by defendant, the fact that the get-up or packaging or writing on the goods or packets in which defendant offered its goods for sale showed marked difference or indicated a clearly different trade origin, different from that of the registered proprietor of the mark, would be immaterial. Thus, the Court stated that defendant’s submission regarding the strip/packaging of the goods being dissimilar could not be accepted.
The Court also relied on Medley Laboratories (P) Ltd. v. Alkem Laboratories Ltd., 2002 SCC OnLine Bom 444, wherein the Court had taken judicial notice of the fact that prescriptions had lost their significance in India and Schedule-H drugs, which must be sold only on a prescription, were being sold over the counter, without prescriptions. Thus, the Court did not accept defendant’s submission that there was no reason for any confusion amongst the consumers because plaintiff’s and defendant’s goods were prescription medicines (Schedule-H drugs) and not something that could be sold over the counter.
The Court noted that both plaintiff’s goods bearing the trade mark “ZITA-MET” and defendants’ goods bearing the trade mark “XIGAMET” were anti-diabetic preparations that were used for treating the same ailment and thus, opined that any confusion or deception between the drugs sold by plaintiff under the trade mark “ZITAMET” containing the molecule sitagliptin and defendants’ goods bearing the trade mark “XIGAMET” containing the molecule teneligliptin could potentially cause harmful side effects on the consumers and/or lead to other disastrous consequences. Thus, the Court held that there would be ad-interim relief in favour of plaintiff.
[Glenmark Pharmaceuticals Ltd. v. Gleck Pharma (OPC) Pvt. Ltd., 2024 SCC OnLine Bom 1660, decided on 13-06-2024]
Advocates who appeared in this case :
For the Plaintiff: Hiren Kamod a/w. Prem Khullar i/b. Mahesh Mahadgut
For the Defendants: Musharaff Baba a/w. Sahil Salvi, Sagar Redkar
Buy Trade Marks Act, 1999 HERE
