CASE COMMENT ON GLENMARK PHARMACEUTICALS LTD. V. GLECK PHARMA (OPC) PVT. LTD. & ORS. [2023] BY – DEBARUN DAS
CASE COMMENT ON GLENMARK PHARMACEUTICALS LTD. V. GLECK PHARMA
(OPC) PVT. LTD. & ORS. [2023][1]
AUTHORED BY – DEBARUN DAS,
5th Year
Student, Amity University Kolkata
Background of the Case
In 2013, the Plaintiff, a
manufacturer of the anti-diabetic drug ‘ZITA-MET,’ secured trademark
registration for ‘ZITA-MET’ and related formative trademarks in Class 5. In
August 2020, the Plaintiff discovered that the Defendant had applied to
register the trademark ‘XIGAMET’ in Class 5, prompting the Plaintiff to file an
opposition notice. By May 2023, the Plaintiff obtained evidence from the
Defendant's purchase bills and invoices indicating that the Defendant was
selling medicinal products under the trademark ‘XIGAMET,’ which led to a
cease-and-desist notice. In response, the Defendant initiated legal action
against the Plaintiff for groundless threats under Section 142 of the Trade
Marks Act, 1999, resulting in a temporary injunction from the Srinagar Court in
June 2023, effectively preventing the Plaintiff from interfering with the
Defendant’s manufacturing, distribution, and sales activities. Subsequently,
the Plaintiff filed an interim application in a Commercial IP Suit before the
Bombay High Court, seeking to restrain the Defendant from using the trademark ‘XIGAMET’
or any mark that is deceptively similar to ‘ZITA-MET’ for medicinal products.
Legal
Issues
1.
Whether the Defendants’ use of the mark ‘XIGAMET’ infringed
upon the Plaintiff’s registered trademark ‘ZITA-MET’.
2.
Whether the impugned mark ‘XIGAMET’ is deceptively similar to
‘ZITA-MET’ and may 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, leading to a
significant likelihood of consumer confusion.
·
That the Defendant’s attempt to dissect ‘ZITA-MET’ into
‘ZITA’ and ‘MET’, and ‘XIGAMET’ into ‘XIGA’ and ‘MET’ to suit their own
convenience violated the anti-dissection rule, which mandates that trademarks
be considered in their entirety rather than as separate components, therefore
said violation is impermissible in view of the settled principles of law.
·
That both trademarks are used for anti-diabetic medications
targeting consumers suffering from diabetes, therefore, a common target
consumer base, and as a result heightening the risk of confusion which is a
very precarious situation considering that ZITA-MET and XIGAMET contain
different molecules – sitagliptin and teneligliptin respectively – and mixing
up the same may potentially cause serious harmful side effects on the consumer.
The Defendant argued:
·
That in the present circumstances, it is necessary that the
present application for ad-interim relief should not be under consideration at
this stage and that the application as well as the suit should be dismissed on
the ground of multiplicity of proceedings and misuse of the legal process.
·
That ‘XIGAMET’ differed visually, particularly in appearance,
initial letters, and the presence of a hyphen, compared to the Plaintiff’s
trademark.
·
That the pronunciation of “IG” in ‘XIGAMET’ was distinct from
the pronunciation of “IT” in ‘ZITA-MET’.
·
That the common usage of suffix “met” is used industry-wide
across the globe for medicines containing the ingredient metformin. He further
argued that there are several medicines being sold in the market with the
suffix “met”.
·
That the Plaintiff’s product contains sitagliptin, while the
Defendant’s product contains teneligliptin, indicating both different classes
as well as molecular structures.
Analysis and Court’s Decision
In this case, the court
cited the legal precedent set by the Hon’ble Supreme Court in Cadila
Health Care Ltd vs. Cadila Pharmaceuticals Ltd.[2],
wherein the court specified the criteria for determining deceptive similarity,
particularly with regard to trademarks for medicinal and pharmaceutical
products. The Supreme Court emphasized that in trademark cases involving the
aforesaid category of products, even the slightest potential for confusion
requires limiting or restraining the use of those marks[3].
As a result, the Court determined that the Defendant's mark would cause
confusion among consumers, which would have grave consequences.
Paragraph 13 of the
judgment especially underscores the Supreme Court's stringent standards for
trademark disputes involving medicinal products, referencing the Cadila
Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. case. The plaintiff's
counsel argued for a stricter test for potential confusion due to the critical
nature of these products. This rigorous approach prioritizes public health,
recognizing the severe implications of consumers confusing one medicinal
product for another. Consequently, the court advocates for a lower threshold of
proof for confusing similarity in medicinal trademark cases to protect public
interest, ensuring even minor similarities are rigorously scrutinized to
prevent harm to consumers.
The Court noted the
Defendant lacked a convincing reason for choosing "XIGAMET," suggesting
a malicious intent to mimic "ZITA-MET." Further, citing Medley
Laboratories (P) Ltd. vs. Alkem Laboratories Ltd.[4],
the Court acknowledged that in India, prescriptions have become insignificant,
with Schedule-H drugs being sold over the counter without prescriptions.
Consequently, the Court rejected the Defendant’s claim that prescription-only
status would prevent confusion. Both products treat the same medical condition,
thereby increasing the risk of confusion between ‘ZITA-MET’ (with sitagliptin)
and ‘XIGAMET’ (with teneligliptin), potentially leading to harmful side
effects.
The Court further noted
that the Plaintiff's product is a brand of teneligliptin, which belongs to an
entirely different class of drugs compared to the product of Defendant No.1,
which contains glimepiride, a medicine classified as a sulfonylurea. Therefore,
the Court concluded that there is no possibility of confusion between the
Plaintiff’s and Defendant’s products.
The Court emphasized that
the potential for confusion in medicinal products requires a stricter standard
due to the severe health risks, including life-threatening situations, that
such confusion can cause. The Court observed that the Plaintiff had established
a prima facie case of trademark infringement due to the deceptive similarity of
the marks and their related products. Consequently, the Court ruled in favor of
the Plaintiff, granting ad-interim relief against the Defendant.
Conclusion
Upon examining the Bombay
High Court's observations and the referenced landmark rulings such as the
Cadila Health Care Case, it becomes evident that even professionals like
physicians and pharmacists can be confused by phonetically and structurally
similar trademarks on medicinal products. This risk is exacerbated by illegible
prescriptions and orders made over the phone. Given the potentially grave
consequences of administering incorrect medication, particularly when drugs for
the same condition differ in composition, a stringent standard for evaluating
deceptive similarity is imperative. Therefore, the Court's foremost
responsibility is to safeguard the public, and it must do so irrespective of
the inconvenience or hardship caused to a party whose trade practices are
likely to mislead or confuse consumers.
[1] Glenmark Pharmaceuticals Ltd. v. Gleck Pharma (OPC) Pvt. Ltd. &
Ors. [2023] <https://www.livelaw.in/pdf_upload/glenmark-pharmaceuticals-ltd-vs-gleck-pharma-opc-pvt-ltd-ors-544938.pdf
> accessed 14 July 2024
[2] Cadila Health Care Ltd vs. Cadila Pharmaceuticals Ltd. 2001 (5) SCC 73
< https://indiankanoon.org/doc/1114158/>
accessed 14 July 2024
[3] Aastha Kaushik,
‘Slightest Confusion Between Medicinal Products Should Be Examined from Point of
View of Ordinary Man of Average Intelligence: Bombay HC’ (Verdictum, 17 June
2024)
[4] Medley Laboratories (P) Ltd. vs. Alkem Laboratories Ltd. 2002(4)
BOMCR70
< https://indiankanoon.org/doc/545914/
> accessed 14 July 2024