Bombay High Court Blocks Use of Deceptively Similar Diabetes Drug Trademark

Laboratories Griffon, incorporated in 1947 and a long-established manufacturer of medicinal preparations, holds registered trademarks “GLIMET” (since 1992) and “GLIMET DS” (since 1999) for anti-diabetic drugs. The company recently discovered the sale of Adwin Pharma’s ELGIMET-SR 1/500 and ELGIMET-SR 2/500 products through e-commerce platforms and alleged that the marks were confusingly similar.

Justice Sharmila U. Deshmukh observed that pharmaceutical trademarks require stricter judicial protection to prevent harmful medication mix-ups, noting that an average consumer with imperfect recollection could easily confuse GLIMET with ELGIMET due to strong phonetic and structural similarities between the two marks. The Court further emphasized that the mere fact that these drugs are sold on prescription does not eliminate the likelihood of confusion, particularly in India where healthcare access and pharmacist supervision vary significantly across regions, making patient safety a paramount concern.

The Court also pointed out that the defendants had merely altered the first two letters of the plaintiff’s registered mark, offering no credible justification for adopting a trademark that is deceptively similar to GLIMET. Further, the defendants appeared to be late entrants in the market and failed to place any documentary evidence on record to demonstrate actual commercial use, investments, or sales of the impugned product, thereby weakening their defense significantly.

Justice Sharmila U. Deshmukh emphasized that pharmaceutical trademarks require heightened protection as any similarity may lead to dangerous medication mix-ups, especially when an average consumer with imperfect recollection is likely to confuse GLIMET with ELGIMET due to their close phonetic and structural resemblance.

She further noted that the prescription-only nature of the drugs does not eliminate the risk of confusion because India’s varied healthcare infrastructure and differing levels of pharmacist supervision increase vulnerability to errors.

The Court also highlighted that the defendants merely changed the first two letters of Griffon’s mark, failed to offer a credible explanation for adopting a deceptively similar trademark, and appeared to be late market entrants who could not produce any documentary evidence demonstrating genuine commercial presence or sales under the impugned mark.

The Court held that a prima facie case of trademark infringement was established and confirmed the earlier ex parte injunction. Adwin Pharma and Elcliff are:

Restrained from using, manufacturing, marketing, stocking, or selling products under “ELGIMET”, “ELGIMET-SR 1/500”, and “ELGIMET-SR 2/500”, or any deceptively similar marks to Griffon’s trademarks GLIMET and GLIMET DS.

However, the Court did not grant interim relief for passing off, noting insufficient evidence of misrepresentation by defendants.

To view the court order, click the link below:

https://medicaldialogues.in/pdf_upload/f29070027480202418-309584.pdf