HC relief to Zydus Glucon-D, restrains Cipla from using trademarks Gluco-C, Gluco-D

Justice C Hari Shankar in his order said that Cipla Health’s marks Prolyte Gluco-C ++ and Prolyte Gluco D ++ infringe the Zydus Wellness’ registered marks, Glucon-C and Glucon-D, as “they are used for identical products”.

Zydus Wellness bagged the brand after it completed acquisition of Heinz India’s consumer wellness business in 2019. This business consisted of four key brands, including Complan, Glucon D, Nycil and Sampriti Ghee

The order was issued in response to a lawsuit filed by Zydus Wellness Products, which manufactures and sells the energy drinks GLUCON-C and GLUCON-D, against Cipla Health alleging that Cipla Health's trademarks were deceptively similar to its registered trademarks.

Zydus contended that Cipla also adopted the typography of a vertically slanting indented edge with the words ‘instant energy’ on a yellow background. Zydus said that it is a market leader in the energy drink segment, with its GLUCON-D Tangy Orange taking a market share of 74 per cent. The brand GLUCON-D has, therefore, become synonymous with the company.

It further said that Cipla started marketing its Glucose product under Gluco C ++ and Gluco D ++, in order to create confusion in the minds of customers into believing an association between the products.

It contended;

" Cipla was marketing its product under the mark ―Prolyte‖ and has, with clear mala fide intent, now started using ―Gluco C ++‖ and ―Gluco D ++‖ alongside ―Prolyte‖, so that the brand name now reads ―Prolyte Gluco C ++‖ and ―Prolyte Gluco D ++‖, with the intent of creating confusion in the mind of the customer into believing an association between the defendant's (Cipla) and the plaintiff's (Zydus Wellness) products."

Meanwhile, Cipla argued that the trademarks GLUCON-C and GLUCON-D are descriptive of the kind, quality, and intended purpose of the products they are used for. As such, the firm argued that these trademarks are not distinctive and cannot be registered as trademarks. Cipla hence contended that there could be no action from such entities for infringement of trademarks. It said;

It further argued the registration was subject to the disclaimer that Zydus would not claim any right to exclusively for use of the letters C and D and hence ‘Gluco-D’ does not infringe upon ‘Glucon-D’. It submitted that;

"The registrations granted to the plaintiff for its trademarks ―GLUCON-C‖ and ―GLUCON-D‖ were subject to the disclaimer that the plaintiff would not claim any right to exclusively user of the individual letter's ―C‖ and ―D‖ thereby."

Furthermore, it explained that there can be no question of any confusion between the marks as Cipla’s product reads ‘Prolyte Gluco-C ++’ and ‘Prolyte GlucoD ++’

Deliberating the issue, the court said that the word Prolyte prefixed to Gluco-C and Gluco-D does not distinguish it from GLUCON-D as ‘Gluco’ is the main ingredient in the name. The court therefore held that Gluco-D is similar to GLUCON-D and therefore, it infringes on Zydus’ registered trademark.

Moreover, on Cipla’s argument that ‘Glucon-D’ is a description of a product and cannot be registered as a trademark, the court held;

"extrapolating the name Glucon-D to understand it to refer to a product combining glucose and Vitamin D would require imagination, thought and perception. While the name could suggest the presence of glucose and Vitamin D, it cannot be said to describe it."

Subsequently, the court said that Cipla Health’s marks Prolyte Gluco-C ++ and Prolyte Gluco D ++ infringe the Zydus Wellness’ registered marks, Glucon-C and Glucon-D, as “they are used for identical products”. It noted;

“Pending disposal of the suit, the defendants (Cipla Health) as well as all others acting on their behalf shall stand restrained from using the marks, Gluco-C or Gluco-D, either by themselves or as part of the marks, Prolyte Gluco-C ++ or Prolyte Gluco-D ++, or as part of any other mark which would be deceptively similar to the plaintiff‘s (Zydus Wellness) registered marks, Glucon-C or Glucon-D, respectively."

“The plaintiff would be entitled to an injunction against the use by the defendants of the mark, Prolyte Gluco-C ++ or Prolyte Gluco-D ++, as they infringe the plaintiff‘s registered mark, Glucon-C and Glucon-D, respectively.”

However, the court clarified that Zydus cannot argue that Cipla used the look and feel of GLUCON-D to fool customers as many health drinks have adopted a similar brand strategy for their products.