Mumbai: A single judge bench of the Bombay High Court comprising ofJustice Firdosh P. Pooniwalla, held that structurally & phonetically similar trademark can’t be registered for drug treating similar ailment but having different composition from already registered mark, as it may create confusion for consumers leading to potential side effects.
Glenmark Pharmaceuticals Ltd. (Plaintiff) is a Company engaged in the business of manufacturing, marketing and selling pharmaceutical and medicinal preparations. One of the Glenmark’s products was an anti diabetic drug sold under the registered trade mark “ZITA-MET”. In the year 2013, Glenmark had applied for and secured trade mark registration for the word mark “ZITA-MET” and ZITA-MET formative trade marks in Class 5.
In August 2020, Glenmark came across the trade mark application filed by Gleck Pharma (OPC) Pvt Ltd. (Defendant) before the Trade Marks Registry for the trade mark “XIGAMET” in respect of Class-5. On 17th August 2020, the Glenmark filed a Notice of Opposition before the Trade Marks Registry opposing the registration for the Gleck’s trade mark application. On 18th April 2023, Gleck filed its evidence in support of the trademark Application in the opposition proceedings. Upon perusal of the evidence, Glenmark came across purchase bills and invoices which indicated that Gleck was selling medicinal preparations bearing the trademark “XIGAMET”.
On 30th May 2023, the Glenmark issued a Cease and Desist notice upon the Gleck. In September 2023, Gleck filed a Suit before Srinagar court, against the Glenmark for groundless threat action. The Court passed a temporary injunction against the Glenmark restraining it from interfering with the manufacturing, distribution and sale of the Gleck’s product “XIGAMET”.
Aggrieved by the same, Glenmark filed an interim application in Commercial IP Suit for restraining Gleck from using the trade mark ‘XIGAMET’ in relation to any medicinal preparations, and further restraining Gleck from using any other mark deceptively similar to ‘ZITA-MET’.
The Glenmark contended that the trade marks “ZITA-MET” and “XIGAMET” are phonetically, aurally, visually and deceptively similar. It submitted that Gleck’s attempt to dissect the Glenmark’s trade mark “ZITA-MET” into “ZITA” and “MET” and the Gleck’s trade mark “XIGAMET” into “XIGA” and “MET” was violative of the anti-dissection rule and was impermissible.
Further Glenmark submitted that its goods bearing the trade mark” ZITA-MET” and the Gleck’s goods bearing “XIGAMET” were anti-diabetic preparations that were used for treating the same ailment. The Glenmark’s goods contained the molecule sitagliptin and Gleck’s goods contained the molecule teneligliptin. Hence, both the drugs were different classes of drugs and at the molecular level both medicines were very different from each other. And that any confusion by the consumers between both drugs could potentially cause harmful side effects.
On the other hand, it was contended by the Gleck that its product was completely distinct from the product of the Glenmark. It submitted that the two marks were distinctive in character as the two words are visually, phonetically and aurally distinct from each other. It submitted that the Gleck’s mark as a whole was distinct because of the appearance, the starting letters and the hyphen in between the Glenmark’s mark. It further submitted that the “IG” in the Gleck’s mark was aurally completely different from the Glenmark’s mark which uses “IT”. It further submitted that the common usage of suffix “met” was used industry-wide across the globe in medicines having the ingredient metformin.
The court observed that both the marks i.e. “XIGAMET” and “ZITA-MET” were word marks. They were structurally similar as they contained the same number of letter and syllables. The word mark used on medicinal products, “XIGAMET” of Gleck was phonetically similar to the word mark “ZITA-MET” of the Glenmark. The court held that the Gleck’s mark “XIGAMET” was deceptively similar to the Glenmark’s registered trademark “ZITA-MET”.
The court relied on the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. wherein the Supreme Court held that a lesser quantum of proof required for determining confusing similarity for medicinal products as it may have disastrous effect on the health. Mere existence of the slightest probability of confusion in case of medicinal product marks requires that the use of such mark be restrained.
The court further observed that most of the purchaser of medicinal products in India may have absolutely no knowledge of English language or of the language in which the trade mark is written. So to them different words with slight difference in spellings may sound phonetically the same. From the point of view of an ordinary man of average intelligence, the mark “XIGAMET” of Gleck was deceptively similar to the trademark “ZITA-MET” of Glenmark. The court relied on the case of Glenmark Pharmaceuticals Ltd. Vs. Sun Pharma Laboratories wherein the Delhi High Court held that first impression of the mark and the view point of a man of average intelligence play important role in determining deceptively similarity of the trade mark.
The court observed that the rival products were meant for same ailment, but had different molecular composition. So the court held that any confusion between the drugs sold by Glenmark and Gleck could potentially cause harmful side effects on the consumers. The court relied on the case of Cadila Health Care Ltd. vs. Cadila Phamaceuticals Ltd. wherein the Supreme Court held that the scrutiny test should be applied strictly to the drugs which have a marked difference in the compositions with completely different side effects, as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant results.
The High court granted the injunction sought by the Glenmark in respect of Gleck’s mark. The court held that there was a probability of confusion in respect of both the marks.
