Trademark| Slightest Confusion Between Medicinal Products Should Be Examined From Point Of View Of Ordinary Man Of Average Intelligence: Bombay HC
The Bombay High Court observed 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.
The Plaintiff herein had filed an application in a suit seeking a temporary injunction from using any medical/pharmaceutical preparations and/or such allied and cogent goods including impugned trademark.
The Bench of Justice Firdosh P. Pooniwalla observed, “Mere existence of the slightest probability of confusion in case of medicinal product marks requires that the use of such mark be restrained. 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…while arriving at a conclusion 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.”
Advocate Hiren Kamod appeared for the Plaintiff and Advocate Musharaff Baba for the Defendants.
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”. Since 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”.
In August 2020, the Plaintiff came across the impugned trade mark application filed by Defendant No.1 before the Trade Marks Registry for the impugned trade mark “XIGAMET” in respect of Class-5.
The primary issue of consideration before the Court was whether the impugned mark of the Defendant is deceptively similar to the trade mark of the Plaintiff. The Court applied the tests given in the landmark judgments in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. (2001 SC), Macleods Pharmaceuticals Ltd. vs. Union of India (2016 Bombay) and Glenmark Pharmaceuticals Ltd. Vs. Sun Pharma Laboratories (2023 Delhi).
The Court observed, “On applying the aforesaid tests to the marks in question before me, I am of the view that the Defendant’s impugned mark “XIGAMET” is deceptively similar to the Plaintiff’s registered trademark “ZITA-MET”. Firstly, 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. This, by itself, makes the Defendants’ impugned mark deceptively similar to the Plaintiff’s trade mark.”
The Court concluded that 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.
The Court was of the view that the Defendant’s ‘XIGAMET’ was deceptively similar to the Plaintiff’s ‘ZITA-MET’, and therefore, the Plaintiff was entitled to an ad-interim injunction.
On the contention of the Defendant that the packaging of the medicine was not similar to that of the Plaintiff’s, the Court held that it is a settled principle of law that physicians, doctors and chemists are not immune to confusion or mistake and it is also a common knowledge that consumers often place order for prescription drugs with chemists over the phone and that often the handwritten 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 trademarks are phonetically and structurally deceptive similar, it further said.
Accordingly, the Court granted an ad-interim injunction to the Plaintiff.
Cause Title: Glenmark Pharmaceuticals Ltd. v. Gleck Pharma (OPC) Pvt Ltd. & Ors. (Neutral Citation: 2024: BHC-OS:8628)
Appearances:
Plaintiff: Advocates Hiren Kamod, Prem Khullar and Mahesh Mahadgut.
Defendants: Advocates Musharaff Baba, Sahil Salvi and Sagar Redkar.