Trademark Tussle: HC bars Glenmark from using Indamet, says similar to Sun Pharma's anti-diabetes drug Istamet

The court noted that Istamet has been available since 2011, whereas Glenmark launched its product in June 2022, following opposition from Sun Pharma in May 2022.

THE CASE

The legal battle between pharmaceutical giants Sun Pharma and Glenmark unfolded in the Delhi High Court, with Sun Pharma alleging trademark infringement and passing off against Glenmark for its use of the mark "INDAMET." Sun Pharma, a prominent player in the pharmaceutical industry since 1978, claimed rights to the mark "ISTAMET" used for diabetes treatment.

Despite ongoing proceedings before the Trademark Registry, Glenmark launched "INDAMET" for uncontrolled asthma treatment, arguing distinctions in product usage and packaging to avoid confusion.

Sun Pharma and Glenmark contested their rights to use the drug names "Istamet" and "Indamet," respectively, which Sun Pharma found to be deceptively similar and confusing. Sun Pharma's medicine Istamet, sold in tablet form under extensions such as ISTAMET XR and ISTAMET XR CP, was classified as a Schedule 'G' drug, while Glenmark's Indamet was categorized as a Schedule 'H' drug for asthma treatment.

Glenmark had argued that Indamet was distinguishable from Istamet or Istamet XR CP as it treated a different ailment, had different packaging, and was sold as a capsule for inhalation with a dry-powder inhaler, unlike the tablet form of Istamet.

However, Sun Pharma asserted that the impugned mark INDAMET was confusingly similar to ISTAMET when tested on the principles of visual, structural and phonetic similarity. It also argued that the adoption of the impugned mark by Glenmark amounts to infringement and would result in erosion of the distinctiveness of Sun Pharma’s mark. Besides, it alleged that a human error in reading or construing Glenmark‘s mark could mislead a user into purchasing an incorrect medicine and thus will have an adverse impact.

Justice Sanjeev Narula, while rejecting Glenmark's claims, concluded that Sun Pharma had successfully met the criteria for issuing a restraint order against Glenmark. The court emphasized the deceptive similarity between the trademarks, highlighting the potential for confusion at the point of purchase, regardless of the mode of administration. The judgment prioritized consumer confusion and associated risks, considering public interest and the potential dangerous consequences of any confusion.

Subsequently, the court granted an injunction favoring Sun Pharma, restraining Glenmark from using "INDAMET" or any deceptively similar mark. Glenmark appealed the decision, leading to ongoing proceedings before the Delhi High Court's Division Bench.

Examining the case, the division bench in its 83-page order noted;

"On an overall consideration of the aforesaid, we are of the considered opinion that the finding of deceptive similarity and likelihood of confusion as ultimately rendered by the learned Judge clearly merits no interference. The learned Judge has on a prima facie evaluation come to conclude that a comparison of the marks ―ISTAMET‖ and ―INDAMET‖ meets the test of structural and phonetic similarity. That conclusion cannot, by any stretch of imagination, be said to be either manifestly erroneous or perverse."

It further said that the single judge was;

"justified in identifying the dominant feature of the two competing marks to be INDAMET and ISTAMET. Merely because ‘XR’ and ‘CP’ were removed from consideration in the course of identification of the prominent features of the two marks would not warrant the marks themselves being reconstructed in the manner as suggested by the appellant (Glenmark). This, in any case, since this was not a matter where Sun Pharma was claiming an exclusive right to use the suffix MET."