Zydus Wellness Products Ltd. Vs. Cipla Health Ltd. & ANR. CS(COMM) 115/2023.

The Hon’ble Delhi High Court passed an interim order to restrain the Defendants from using the marks “GLUCO-C++” & “GLUCO-D++” for glucose powder which is deceptively similar to the Plaintiff’s marks “GLUCON-C” & “GLUCON-D”.

Facts

The Plaintiff, a well-known Pharmaceutical Company and registered proprietor of the mark “GLUCON-C” & “GLUCON-D” initiated a suit against the Defendants restraining to use the impugned marks “GLUCO-C++” & “GLUCO-D++” of the Plaintiff.

Issues Raised

• Whether the Defendant’s mark infringes the Plaintiff’s registered trademark?
• Whether Defendant’s trade dress is deceptively similar to the Plaintiff’s trade dress?

Plaintiff’s Contentions

The Plaintiff contended that its trademarks ‘GLUCON-C’ & ‘GLUCON-D’ are well-known and have acquired distinctiveness by virtue of extensive use since 1982. The Plaintiff also argued that the impugned marks are deceptively similar to the Plaintiff’s mark. According to the Plaintiff, the Defendants are using deceptively similar trade-dress and color scheme with malafide intention to deceive the public and capitalize on the reputation and goodwill of the Plaintiff.

Defendant’s Contentions

In response to the same, the Defendants had argued that there is a substantial graphic and phonetic difference between ‘GLUCON-C’ & ‘GLUCON-D’ and the impugned marks. The Defendant also argued that if disclaimed ‘C’ and ‘D’ are to be disregarded, the word ‘GLUCO’ is simply descriptive as it is common to trade and not capable of distinguishing products. According to the Defendants, there is no reputation and goodwill in the trade dress of the Plaintiff, as the same has been changed over time and has no commercial user. The Defendants also argued that the impugned marks “GLUCO-C ++” & “GLUCO-D ++” are preceded by its own brand name “Prolyte” which is sufficient to distinguish its mark from the Plaintiffs’.

Judgment

After critically analyzing the marks and contentions put forth by the parties the Hon’ble Court held that the impugned mark is deceptively similar to the Plaintiff’s registered marks as they differed by only one letter and a hyphen. The Court also held that the Defendants not just copied the name of the Plaintiff but also the trade dress and color scheme to deceive the consumers. The court rejected the Defendants’ contention that the Plaintiff’s marks were invalid and descriptive as they have acquired distinctiveness by long and continuous use.

The Hon’ble Court granted the injunction in favor of the Plaintiff, restraining Defendants from using the impugned marks or any other mark similar to the Plaintiff. The Court also ordered the Defendant to recall all the products which bear the Plaintiff’s marks from the market.           

Conclusion & Analysis

In the present case, the Plaintiff has made out the prima-facie case against the Defendants for infringement and passing-off as it is shown that the Plaintiff’s marks are well-known and have acquired distinctiveness and reputation due to extensive and long use. The Defendants have not shown any valid justification and defense for using the deceptively similar marks of the Plaintiff. The balance of convenience is also in favour of the Plaintiff, as it has been using its marks and trade dress for a long time and has a substantial market share in the energy drink segment. The Defendant has started using its impugned marks and trade dress only recently and has not shown any online presence or sales figures for its products.