Delhi High Court: Glenmark Pharmaceuticals Restricted from Using “INDAMET” Mark

Summary

The Delhi High Court issued an injunction restraining Glenmark Pharmaceuticals from using the mark “INDAMET” and granted injunction in favour of Sun Pharma for its mark “ISTAMET.” The Court found that the two marks were deceptively similar, posing a risk of confusion and potential health risks for consumers. The overall impression of the marks was considered and how theypose a potential risk for misuse in the administration of drugs. The Court also examined the description of goods and packaging, emphasizing the importance of considering the perspective of end consumers.[1]

Case Timeline

Sun Pharma and Glenmark, two major pharmaceutical companies in India, were involved in a legal dispute over the use of the drug names “ISTAMET” and “INDAMET.” The case was presented before a Single Judge Bench of the Delhi High Court wherein Sun Pharma alleged that Glenmark’s use of the mark “INDAMET” infringed upon its registered mark “ISTAMET XR CP” and constituted passing off.

The Court examined whether the two marks were deceptively similar and whether the description of goods and packaging adequately differentiated them. Additionally, the potential risks to public health resulting from confusion in drug administration were taken into consideration.

Issues Raised

1. Whether the competing marks “ISTAMET” and “INDAMET” were deceptively similar.
2. Whether the description of goods and packaging sufficiently distinguished the marks.

Appellant’s Arguments

Sun Pharma argued that the mark “INDAMET” was structurally and phonetically similar to its registered mark “ISTAMET XR CP.” It emphasized that the distinguishing feature of its mark was the term “ISTAMET,” while the additional elements “XR” and “CP” were standard in the pharmaceutical industry.

Sun Pharma raised concerns about the potential risks to public health due to confusion in drug administration and advocated for a higher level of scrutiny when assessing deceptive similarity for pharmaceutical products. It asserted that Glenmark’s use of the mark could result in misuse and potential health hazards, especially in situations where consumers self-administer medications.

Respondent’s Arguments

Glenmark countered Sun Pharma’s arguments by stating that there were substantial differences in the composition of their products.It further argued that consuming “INDAMET” instead of “ISTAMET” would not have any adverse effects and the medication would safely be excreted from the body.

Judgment

The Court determined that the marks “ISTAMET” and “INDAMET” were structurally and phonetically similar, posing a risk of confusion for consumers. It emphasized that the overall impression of a trademark was crucial, with the distinctive element being the most essential feature.

Considering the potential risks to public health, particularly in cases of self-administration, the Court ruled in favour of Sun Pharma. Sun Pharma’s established usage since 2011 and its market recognition tilted the balance of convenience in its favour.

Consequently, the Court granted an injunction, prohibiting Glenmark from using the mark “INDAMET” or any deceptively similar marks, to protect Sun Pharma from harm and safeguard public health.

Analysis

The case highlights the significance of considering the overall impression of marks and the potential risks to public health when assessing deceptive similarity in pharmaceutical products. The Court’s decision aims to prevent confusion and deception in drug administration, particularly in self-administration scenarios. Overall, the judgment seeks to protect the appellant’s rights, safeguard public health, and prevent potential misuse and health risks associated with confusion in drug administration.

[1]Sun Pharma Laboratories Ltd. v. Glenmark Pharmaceuticals Ltd., CS (COMM) 711 of 2022, decided on 3-7-2023