Delhi High Court: In a case wherein Sun Pharma Laboratories Ltd. (‘Sun Pharma’) and Glenmark Pharmaceuticals Ltd. (‘Glenmark’), the two giants of the pharmaceutical industry in India were contesting their right to use drug names “ISTAMET” and “INDAMET” (‘impugned mark’), respectively, which Sun Pharma found to be deceptively similar and confusing, a Single Judge Bench of Sanjeev Narula, J.*, opined that “INDAMET” mark was deceptively similar to “ISTAMET” mark, both structurally and phonetically. Thus, the Court directed that during the pendency of this suit, Glenmark, including any parties acting on their behalf, were restrained from manufacturing, offering for sale, selling, displaying, advertising, marketing, directly or indirectly, any medicinal/pharmaceutical preparations bearing the impugned mark, “INDAMET” or any other mark which was identical/ deceptively similar to Sun Pharma’s registered mark “ISTAMET XR CP”.
The Court noted that Sun Pharma contended that Glenmark’s use of the mark “INDAMET” amounted to infringement of Sun Pharma’s registered mark “ISTAMET XR CP” , and, passing off of Sun Pharma’s “ISTAMET” marks.
The issues for consideration before this Court were:
1. Whether the two competing marks were deceptively similar?
The Court opined that the restriction that Sun Pharma’s mark must be read as a whole, was a reiteration of Section 17 of the Trade Marks Act, 1999, which provided that when a trademark consisted of several matters, its registration should confer exclusive right to use of the trade mark taken as a whole. The Court further opined that protection afforded to a trade mark was based on mark’s overall impression on the consumers and not just one particular feature and the distinctive element or combination of elements was typically the most essential feature of the mark and the same was entitled to protection, as it sets the mark apart from others in the market and makes it identifiable to consumers. The Court observed that although Sun Pharma’s registration was for the composite mark “ISTAMET XR CP”, the dominant feature indisputably remained the word “ISTAMET”. Furthermore, the terms “XR” (denoting ‘extended release’) and “CP” (indicating ‘combipack’), the added matter was standard nomenclature used by pharmaceutical companies to describe products. Therefore, the Court opined that distinguishing feature of Sun Pharma’s mark was the term “ISTAMET”, which, when compared to Glenmark’s “INDAMET”, exhibited striking similarity.
The Court further opined that the competing marks “ISTAMET” and “INDAMET” were evidently structurally and phonetically similar, when compared as a whole with different prefix. The only difference lies in two letters of the prefix, with Sun Pharma employing ‘ST’ in ‘ISTA’ and Glenmark using ‘ND’ in ‘INDA’. Therefore, “INDAMET” was deceptively similar to “ISTAMET” both structurally and phonetically.
The Court relied on Cadilla Healthcare v. Cadilla Pharmaceuticals, (2001) 5 SCC 73, wherein the Court held that “trade marks in relation to pharmaceuticals must be assessed with utmost care and attention, keeping in the mind the potential risk to public health. Thus, scrutiny of deceptive similarity between trade marks for pharmaceutical products was higher as compared to other goods”. The Court opined that “after considering the overall similarity between the two marks, the likelihood of confusion for a buyer could not be ruled out solely because the packaging was different. Confusion surrounding the mode of administration of a drug could lead to misuse and potential health risks. Such risks were particularly heightened in scenarios where patients were self-administering medications at home, without direct supervision from healthcare professionals”.
2. Whether the description of goods mentioned under Sun Pharma’s registration and packaging of products under the competing marks, was sufficient to distinguish the parties’ marks?
The Court opined that “the specificity outlined in Sun Pharma’s registration, which confined their pharmaceutical product to be utilized for diabetes, should not be interpreted narrowly because when it comes to pharmaceutical products, it was crucial to consider the perspective of the end consumer. Therefore, given the similarities between the products, the Court could not discount the potential for confusion or misunderstanding when ordinary consumers were faced with similar-looking prescription drugs, even if their therapeutic applications differ significantly”.
The Court opined that although Glenmark had emphasized that the difference in their compounds as a significant point of distinction, however, the marked similarity between Glenmark’s and Sun Pharma’s brand names overshadow these differences in composition, due to the shared suffix “MET.” The Court further opined that this could cause substantial confusion among consumers suffering from either asthma or diabetes, potentially leading to serious consequences.
The Court after considering the explicit warnings provided on the packaging of Glenmark’s “INDAMET” drug, rejected the contention of the respondent’s counsel that if a consumer mistakenly consumed Glenmark’s “INDAMET” in place of Sun Pharma’s “ISTAMET,” intended for the treatment of Type 2 Diabetes, no adverse effects would ensue; the medication would simply be excreted from the body.
Thus, the Court observed that the clinical consequence of the accidental consumption of an incorrect drug was a ‘grey area’ and could not be a point of differentiation for this Court to rule out any possibility of confusion between the two drugs.
The Court held that the balance of convenience unequivocally lies in favour of Sun Pharma as it had been utilizing the mark “ISTAMET” since 2011, which established a considerable period of usage and market recognition, whereas, Glenmark launched their product under the “INDAMET” mark quite recently, in 2022. The Court thus opined that this scenario suggested that Glenmark consciously chose to use the impugned mark despite the existing opposition, thus accepting the associated risks. This action could be construed as either negligence or a strategic gamble on Glenmark’s part. Additionally, the well-established principle that ‘first in the marketplace’ holds the right, applies here, favoring Sun Pharma.
The Court opined that the balance of convenience distinctly favoured the plaintiff, Sun Pharma, thus warranting the issuance of an injunction and if an injunction was not granted, Sun Pharma might suffer an irreparable loss and damage. Therefore, the Court opined that in the interest of protecting Sun Pharma from such irreparable harm, and to safeguard public health, it was crucial that an injunction was granted in the present case. Thus, the Court directed that during the pendency of this suit, Glenmark, including any parties acting on their behalf, were restrained from manufacturing, offering for sale, selling, displaying, advertising, marketing, directly or indirectly, any medicinal/pharmaceutical preparations bearing the impugned mark, “INDAMET” or any other mark which was identical/ deceptively similar to Sun Pharma’s registered mark “ISTAMET XR CP”.
The matter would next be listed on 3-10-2023 before the Roster Bench.
[Sun Pharma Laboratories Ltd. v. Glenmark Pharmaceuticals Ltd., 2023 SCC OnLine Del 3786, decided on 3-7-2023]
*Judgment authored by: Justice Sanjeev Narula
Advocates who appeared in this case :
For the Plaintiff: Sachin Gupta, Swati Meena, Yashi Agarwal, Rohit Pradhan, Advocates;
For the Defendant: CM Lall, Senior Advocate, Nitin Sharma, Kanishk Kumar, Deepika Pokharia, Naman;
Tandon, Ananya Chugh, Advocates.