CASE REVIEW:Glenmark Pharmaceuticals Ltd. vs Gleck Pharma (OPC) Pvt Ltd

CASE TITLE

Glenmark Pharmaceuticals Ltd. vs Gleck Pharma (OPC) Pvt Ltd

CITATION

2024:BHC-OS:8628

COURT

Bombay High Court

BENCH

Justice Firdosh Pooniwalla

DATE OF JUDGEMENT

13th June, 2024

RELEVANT STATUTES

1. Trademarks Act, 1999
2. Code of Civil Procedure, 1908
3. Commercial Courts Act, 2015

INTRODUCTION

The case of Glenmark Pharmaceuticals v. Gleck Pharma (OPC) concerns the infringement of Glenmark's registered trademark, ZITA-MET, an anti-diabetic medication, by the defendants, who used the name XIGAMET. The plaintiff sought an ad-interim injunction to prevent the defendants from selling the product bearing the impugned mark because the two trademarks were very similar and therefore could potentially generate a risk of confusion with grave consequences for the health of the population. In addition to this, Srinagar Court proceedings under Section 142 of the Trade Marks Act, and application of the higher standard of scrutiny required by the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) were also key issues of this case.

BRIEF FACTS

Since 2013, Glenmark has sold its anti-diabetic drug branded as ZITA-MET by the molecule Sitagliptin, and reformulated it in 2015 to Teneligliptin with Metformin. The mark was registered in Class 5 and has gained substantial goodwill and reputation. In February 2020, defendant Gleck Pharma applied to register a mark, "XIGAMET" on a proposed-to-be-used basis, which Glenmark objected to in August 2020. No use was evident for some period, but in the case of opposition, in April 2023, Glenmark found invoices indicating that the defendant was actively selling products under the name XIGAMET. In May 2023, Glenmark sent a cease and desist notice, which in turn was challenged by the defendants. In the meantime, Gleck Pharma had brought an action in the Srinagar Court under Section 142 of the Trade Marks Act, 1999, on the ground of unreasonable threats, and received an ex parte injunction in June 2023 to prevent any interference with its business against Glenmark. Even though this injunction was not renewed in October 2023, the Srinagar Court in February 2024 once more restrained Glenmark, but said its order was conditional upon the Bombay High Court. Glenmark subsequently brought the current Commercial IP Suit in October 2023 to the Bombay High Court, claiming an urgent ad-interim injunction to prohibit the use of the mark "XIGAMET" by the defendants.

ISSUES INVOLVED

1. Was there a similarity between the mark "XIGAMET" of the defendants to the plaintiff's registered trademark, the name "ZITA-MET", especially under the rigorous standards that are used in the case of medicinal and pharmaceutical products?
2. Whether the resemblance between the two marks, when applied in the anti-diabetic medicines, presents a risk of confusion that might cause harm to public health which is the reason why an injunction should be granted urgently?
3. The question of whether or not the Bombay High Court has territorial jurisdiction to hear the suit, considering the arguments raised by the defendants that it was not carrying out any business within its jurisdiction.
4. Whether the pendency of proceedings before the Srinagar Court (including the injunction granted by the Srinagar Court under Section 142 of the Trade Marks Act, 1999) is a restriction on the right of the plaintiff to seek relief before the Bombay High Court?
5. Whether the plaintiff had a proven prima facie case of infringement, whether the balance of convenience is in its favor, and whether it will suffer incurable harm if the ad-interim relief is refused?

ARGUMENTS

PLAINTIFF

The learned counsels representing the registered owner of the trademark of ZITA-MET presented a case by stating that, according to the Trade Marks Act, 1999, the plaintiff has exclusive rights over their registered mark, and the use of XIGAMET by the defendants is considered infringement. They stressed the similarity of the two symbols phonetically, visually, and structurally, where each symbol has the same number of letters and syllables, and the two are used as anti-diabetic drugs. This kind of similarity, they argued, is especially hazardous in the pharmaceutical industry, where any slight misinterpretation of similarity can be fatal.

Given that medicinal products pose greater risks to public health, the plaintiff resorted to the decision of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, according to which a more stringent test of deceptive similarity is required in pharmaceutical trademark cases. They also referred to the ruling of the Delhi High Court in Glenmark Pharmaceuticals Ltd. v. Sun Pharma Laboratories of 2023 that reiterated that special care should be taken in cases concerning trademarks in the pharmaceutical industry.

Moreover, the plaintiff also applied the anti-dissection rule by stating that the defendants could not divide the marks into parts, ZITA/MET and XIGA/MET. They argued that such marks should be seen as a whole and that XIGAMET is misleadingly comparable to ZITA-MET. Another emphasis of Glenmark was that both medications are prescribed to the same disease (diabetes), but they have different active molecules: Sitagliptin in ZITA-MET and Teneligliptin in XIGAMET. Any misunderstanding between the two would lead to negative side effects on the patients. Therefore, the plaintiff claimed that a prima facie case on infringement was proven, the balance of convenience was in its favor, and denying relief would be irreparably harmful to social health and its goodwill.

DEFENDANT

The counsels for Gleck Pharma were against the injunction due to various reasons. They started their argument by stating that there was no jurisdiction of the Bombay High Court, claiming that the defendants did not manufacture, sell, or stock their products under its territorial jurisdiction, and that the suit was an abuse of process, considering the parallel proceedings in the Srinagar Court. According to them, this proceeding was duplicative, given that the Srinagar Court had already made an injunction in their favor as per Section 142 of the Trade Marks Act, 1999, and that the Bombay proceedings would lead to conflicting orders.

The defendants on merits argued that the marks XIGAMET and ZITA-MET are different in their overall impression. They asserted the discrepancy in the initial letters (X vs. Z), the use of a hyphen in ZITA-MET, and the phonetic variation between IG and IT. They also contended that the suffix -met is widely used in the pharmaceutical sector, especially for drugs that have Metformin, and thus Glenmark could not have used it exclusively for itself. To support this argument, they cited the presence of third-party marks like SITAMET, which did not interfere with each other in the market.

The defendants relied on the Johann A. Wulfing v. Chemical Industrial and Pharmaceutical Laboratories Ltd case, which discusses the limits of exclusivity in pharmaceutical trademarks, and that minor similarities will not necessarily result in infringement, if the overall impression of the marks is different, as upheld by the Supreme Court in F. Hoffmann La Roche and Co. v. Citadel Fine Pharmaceuticals case.

The defendants further claimed that their product was a quality, reliable medicine that had been sold in the Kashmir Valley and had been prescribed by doctors and not sold over the counter. They argued that such a prescription-only status decreased the chances of confusion. Lastly, they put forward that any financial damage done to Glenmark would be monetarily compensated and, as such, no irreparable injury would be inflicted. It was based on this submission made by the defendants that the plaintiff does not have a prima facie case and that the balance of convenience was in favor of the defendants.

JUDGEMENT

The heightened level of concern with respect to trademark lawsuits in the pharmaceutical sector was reiterated by the Bombay High Court in Glenmark Pharmaceuticals Ltd. v. Gleck Pharma (OPC) Pvt. Ltd., which issued an ad-interim injunction to Glenmark against the use of the mark XIGAMET. Justice Pooniwala opined that the trade marks ZITA-MET and XIGAMET are phonetically, structurally, and visually similar, as both are word marks of equal length and syllabic composition, and both are applied towards the treatment of the same ailment, namely diabetes. Relying immensely upon the Honorable Supreme Court’s verdict in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. and other similar cases, the Court emphasized that in circumstances concerning the medicinal products, any slightest chance of confusion should be eliminated, as the outcomes of such confusion will be disastrous to the health of the people, as compared to harm caused by non-pharmaceutical trademark confusion. The Court negated the defendant's submissions, relying on the packaging, prescription-only, and third-party use of similar suffixes such as -met, based on the fact that when the similarity of the marks was found to be deceptive, then such differences become immaterial in pharmaceutical trademark cases. The court, addressing the objections of jurisdiction and multiplicity of proceedings, observed that the Srinagar Court, in its interim order, acknowledges the primary jurisdiction of the Bombay High Court in deciding the dispute, and therefore, this order is expressly subject to the Bombay High Court’s determination. The Court also criticized that the defendants did not give a plausible reason behind using the mark XIGAMET, viewing it as an attempt to use the goodwill of Glenmark. While granting the injunction, the Court emphasized that the main role of trademark law in the pharmaceutical industry will always be to safeguard public health and to maintain the sanctity of the register even at the expense of commercial inconvenience to one party.

RATIO DECIDENDI

The ratio decidendi behind the Bombay High Court’s decision is that in cases involving pharmaceutical trademarks, a deceptive similarity test should be applied with stricter requirements by the judiciary, as even a minute possibility of confusion can have serious health repercussions to the population. The Court gave the rationale that the defendant’s mark “XIGAMET” is deceptively similar to the plaintiff's registered "ZITA-MET" mark, both being word marks of the same length and syllabic structure, used for anti-diabetic medicines treating the same ailment. The court reflected upon the objections of jurisdiction and multiplicity of other proceedings, by giving the reason that the Srinagar Court, in its interim order, recognizes the primary jurisdiction of the Bombay High Court in deciding the dispute, and thus, this order is specifically held to the decision of the Bombay High Court. The Court held that the importance of the trademark law in the pharmaceutical industry is to safeguard public health, despite causing commercial inconvenience to the pharmaceutical establishments.

FINAL DECISION

The Bombay High Court upheld the mark of the defendants, XIGAMET, as deceptively similar to the registered trademark of Glenmark, which was a word mark of the same length and similar phonetic structure used to treat the same ailment. Using the stricter approach for pharmaceutical products laid down in the case of Cadila Health Care Ltd., the Court ruled that even the slightest chance of confusion should be avoided in the interest of public health. The judgment highlighted that the defendant’s submission about the packaging differences and prescription-only status becomes irrelevant when deceptive similarity of trademarks is found by the court. The other observation made by the Court was that the defendants had not given a plausible account of the reason behind the use of the impugned mark, and this indicated an ill-principled motive. Justice Firdosh P. Pooniwalla, therefore, granted ad-interim relief in favor of the applicant Glenmark.

IMPACTS OF THE JUDGMENT

This case has significant implications as far as pharmaceutical trademark law in India is concerned, as it reaffirms the principle that a higher standard of scrutiny should be employed by the courts in the case of medicinal products, as upheld by the Supreme Court in its ruling in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. The Bombay High Court upheld the use of the same phonetic, visual, and structural similarity between ZITA-MET and XIGAMET to rule that the slightest risks of confusion in life-saving drugs can have negative side effects on public health. The case also elucidates that the anti-dissection regulation denies the defendants permission to divide the marks into small parts to avoid infringement and highlights that the territorial jurisdiction and parallel proceedings cannot dilute the rights of a trademark owner safeguarded by the statute. This decision upheld the drug manufacturers' brand protection and also greatly reinforced that citizens’ health is a priority over business convenience trademark suits.

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