Delhi High Court grants injunction in favour of Glaxo Group for its marks Betnovate-N, Betnovate-C, T-Bact, Cobadex, Zentel, Augmentin

Delhi High Court: In a case wherein a suit was filed by the plaintiffs, seeking protection of its various marks for medicinal and pharmaceutical preparations, Prathiba M. Singh, J., opined that the defendant was brazenly using marks which were nearly identical to the plaintiffs’ marks and the defendant was also copying the get up and the colour combination. Thus, the Court thus held that there shall be an injunction restraining the defendant from manufacturing, selling, offering for sale any pharmaceutical preparations including ointments, creams, tablets, oral drops, capsules, and injections, under the marks BETNOSPAN-N, BETNOSPAN-C, T-BACT, ZENLET, COBADAY FORTE and ZEPMENTIN.

Background

The Plaintiff 1, Glaxo Group Ltd. had filed the present suit along with Plaintiff 2, GlaxoSmithKline Pharmaceuticals Ltd. seeking protection of its various marks for medicinal and pharmaceutical preparations namely, (a) BETNOVATE-N and BETNOVATE-C mark and packaging; (b) T-BACT mark and packaging; (c) COBADEX mark and packaging; (d) ZENTEL mark and packaging; and (e) AUGMENTIN. The suit concerned these five marks and their packaging which were being imitated by the defendant, Boots Lifesciences Ltd.

It was submitted by the plaintiffs that they coined the terms BETNOVATE, T-BACT, COBADEX, ZENTEL, and AUGMENTIN many decades ago, and these terms did not convey to the ordinary public or to pharmacists, a description of the composition of the pharmaceutical and medicinal preparations. It was further submitted that the plaintiffs’ marks were inherently distinctive, and entitled to the highest degree of protection under the Trade Marks Act, 1999 (‘Act’). The plaintiffs submitted that not only had the plaintiffs’ marks acquired trans-border reputation in India, but they had also become well-known owing to extensive and continuous use within India. Thus, it was averred that the plaintiffs’ marks qualified as ‘well-known trade marks’ under the Act. The plaintiffs’ grievance was that the defendant had deliberately adopted, manufactured, and started marketing pharmaceutical preparations under identical/similar marks in almost identical colour combination, packaging, get up and trade dress as that of the plaintiffs.

Comparison of the defendant’s and the plaintiffs’ marks

Analysis, Law, and Decision

The Court opined that the comparison of the defendant’s and the plaintiffs’ marks would show that the defendant had not merely copied one mark or packaging but had deliberately adopted a series of marks, in packaging with almost identical colour combinations. The obvious intention was to pass off the defendant’s products as those of the plaintiffs, and such use of marks and product get-up, which was identical, would also constitute infringement of trade mark and copyright.

The Court noted that the plaintiffs had issued legal notices earlier in respect of the infringing marks and in replies to those notices, the defendant agreed that it had stopped the manufacturing of the infringing products and requested the plaintiff to not to institute legal proceedings on the pretext of it being a small company. But the Court observed that despite this correspondence, the defendant had continued to manufacture and sell various products bearing marks and get-ups similar to those of the plaintiffs’ products.

The Court opined that the defendant was brazenly using marks which were nearly identical to the plaintiffs’ marks and the defendant was also copying the get up and the colour combination and thus, the clear intent appeared to ride on the reputation of the plaintiffs’ marks and products. The Court relied on Cadila Health Care v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, wherein it was held that a stricter approach was required in cases of medicinal preparations and products since any confusion between the respective medicinal products was likely to have a disastrous effect on public health and even a remote chance of confusion in pharmaceutical medicines products had to be avoided.

The Court held that the plaintiffs had made out a prima facie case for grant of an ex parte ad-interim injunction and balance of convenience lied in favour of the plaintiffs, and they were likely to suffer irreparable harm in case the injunction was not granted. Thus, the Court held that there shall be an injunction restraining the defendant from manufacturing, selling, offering for sale any pharmaceutical preparations including ointments, creams, tablets, oral drops, capsules and injections, under the marks BETNOSPAN-N, BETNOSPAN-C, T-BACT, ZENLET, COBADAY FORTE and ZEPMENTIN (‘impugned marks’) which were identical/deceptively similar to the marks get up and combination of the plaintiffs’ marks, namely, (a) BETNOVATE and BETNOVATE formative marks, including BETNOVATE-N and BETNOVATE-C; (b) TBACT; (c) COBADEX, and COBADEX formative marks, including COBADEX FORTE; (d) ZENTEL, and (e) AUGMENTIN. Further, the defendant was also restrained from using the infringing packaging with get up and colour combination of the plaintiff’s packaging.

The matter would next be listed on 11-12-2023.

[Glaxo Group Ltd. v. Boots Lifesciences Ltd., 2023 SCC OnLine Del 4600, Order dated 24-7-2023]

Advocates who appeared in this case :

For the Plaintiffs: Urfee Roomi, Janaki Arun, Ritesh Kumar, Advocates;

Buy Trade Marks Act, 1999   HERE