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

A Division Bench, comprising justices Yashwant Varma and Dharmesh Sharma, dismissed Glenmark's appeal and lifted the order keeping the injunction on hold. The bench supported the single judge's decision, stating that the dominant features of the competing marks are "INDAMET" and "ISTAMET." The court emphasized that the removal of "XR" and "CP" from consideration does not alter this assessment, as Sun Pharma does not claim exclusive rights to these suffixes.

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."

The bench added;

"We ultimately bear in mind the indubitable fact that ISTAMET and INDAMET are meant to attend to chronic ailments. It would therefore be perilous to ignore the test of heightened scrutiny … while considering the issue of deceptive similarity. We also bear in mind the undisputed fact that ISTAMET had been available in the market right from 2011 whereas Glenmark chose to launch its product only on June 16, 2022 and that too after an opposition to its mark had come to be filed by Sun Pharma on May 27, 2022. The question of balance of convenience was thus rightly answered by the single judge while passing the impugned order."

To mention, the single judge, while explaining the balance of convenience had noted that; "The balance of convenience distinctly favours the Plaintiff, Sun Pharma, thus warranting the issuance of an injunction. Furthermore, if an injunction is not granted, Sun Pharma may suffer an irreparable loss and damage. The deceptive similarity of the marks, coupled with Glenmark's recent market entry with a strikingly similar mark, could potentially lead to significant loss of business for Sun Pharma. More critically, it may damage Sun Pharma's long-built reputation and goodwill among consumers, who may inadvertently associate the quality and effects of Glenmark's product with Sun Pharma's product, due to the deceptive similarity in their marks. This reputational damage is intangible and often impossible to fully quantify or rectify, thereby characterizing it as irreparable harm. Furthermore, the potential health risks for consumers due to confusion between the two products adds a heightened element of public interest to this case. Therefore, in the interest of protecting Sun Pharma from such irreparable harm, and to safeguard public health, it is crucial that an injunction is grante in this case."

Subsequently, the division bench dismissed Glenmark's plea and noted;

"... the appeal fails and shall stand dismissed. We uphold the injunction granted by the learned Single Judge. The interim order dated 26 July 2023 operating on this appeal shall in consequence stand vacated."

To view the original order, click on the link below:

https://indiankanoon.org/doc/79798812/