Trademark registration in Mohali, Trademark registration in Chandigarh, Trademark registration in Panchkula

Brief Background:

Glenmark Pharmaceuticals Ltd. (The “Plaintiff”) is a Company engaged in the business of inter alia manufacturing, marketing and selling pharmaceutical and medicinal preparations. One of the Plaintiff’s products is an anti diabetic drug sold under the registered trade mark “ZITA-MET”. From April 2013 to January 2014 the chemical composition of the Plaintiff’s drug bearing the said trade mark comprised of the molecule SITAGLIPTIN. After 2015 the Plaintiff changed the molecule of “ZITA-MET” from Sitagliptin to Teneligliptin and Metformin.

Facts of the Case:

The Plaintiff has applied for and secured trade mark registration for the word mark “ZITA-MET” and ZITA-MET formative trade marks in Class 5 and it is the case of the Plaintiff that, since the year 2013, the Plaintiff has been openly continuously and extensively using the said trade mark “ZITA-MET” in respect of its goods and has acquired tremendous goodwill and reputation in respect of its goods bearing the trade mark “ZITA-MET”. The present case pertains to the infringement of the Plaintiff’s trademark “ZITA-MET” by the Defendant’s use of the impugned Trade Mark “XIGA-MET”.

Issue Involved:

The main issue for consideration is whether the impugned mark of the Defendant is deceptively similar to the trade mark of the Plaintiff.

Decision:

It was held that the Defendant’s impugned mark “XIGAMET” is deceptively similar to the Plaintiff’s registered trademark “ZITA-MET” on the basis that both the marks are word marks. The two work marks are phonetically similar. They are structurally similar as they contain the same number of letter and syllables. Both the marks are used in respect of the same kind of products.

Reason behind Judgement:

  1. This Court placed reliance on the view taken by the Supreme Court in Cadila Health Care Ltd. (supra), a stricter approach has to 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 may only cause economical loss to the Plaintiff, confusion between two medicinal products may have disastrous effects on health, and, in some cases, on life itself.
  • Further, as held by this Court in the case of Macleods Pharmaceuticals Ltd. (supra), when a particular medicinal or a pharmaceutical product is involved as the impugned trade mark which may deceive the public or cause a confusion with respect to another trade mark, it is the Court’s primary duty to take utmost care to prevent any such possibility of confusion in the use of trademarks, as a confusion in terms of medicinal or pharmaceutical products may have disastrous effects on the health of the consumer.
  • Mere existence of the slightest probability of confusion in case of medicinal product marks requires that the use of such mark be restrained.
  • With respect to the similarity and confusion between medicinal products, the same should be examined from the point of view of an ordinary man of average intelligence instead of that of a specialized medicinal practitioner and the ordinary common man of average intelligence who would go to buy medicines is definitely going to be confused between the two marks.
  • Further in Cadila Health Care Ltd. (Supra), the Supreme Court and this Court have held that it is a settled principle of law that physicians, doctors and chemists are not immune to confusion or mistake. It is also common knowledge that consumers often place order for prescription drugs with chemists over the phone and that often the hand written prescriptions are difficult to read. These factors enhance the likelihood of confusion and deception by the chemists and physicians especially in facts such as the present case where the rival trade marks are phonetically and structurally deceptive similar.
  • As per the submission of the Defendants that the Plaintiff’s goods bearing the trademark ZITA-MET containing the molecule sitagliptin and the Defendants’ goods bearing the trademark XIGAMET containing the molecule teneligliptin are both different class of drugs and that at the molecular level these medicines are very different from each other. In this context, it took reference from the judgement of the Supreme Court in Cadila Health Care Ltd. vs. Cadila Phamaceuticals Ltd. (Supra) in which it was held that:

The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendants drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiffs medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems. In this regard, reference may usefully be made to the case of Glenwood  Laboratories, Inc. Vs. American Home Products Corp., 173 USPQ 19(1972) 455 F.Reports 2d, 1384(1972), where it was held as under:

“The products of the parties are medicinal and applicants product is contraindicated for the disease for which opposers product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the

pharmaceuticals.”

and held that the above submission of the Defendants also cannot be accepted.

Keeping these tests in mind, by virtue of the fact that the word mark “XIGAMET” of the Defendant is phonetically and structurally similar to the word mark “ZITA-MET” of the Plaintiff and the two marks are used on medicinal products, in my view the injunction sought by the Plaintiff in respect of Defendant’s mark is required to be granted.

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