IP Connect

Delhi High Court: Phonetic similarity vital in case of Trade marks apropos medicinal products

GLAXO GROUP LTD. & ANR. Vs. S.D. GARG & ORS

The Hon’ble High Court of Delhi, on May 12, 2015, has passed a decree in favour of the Plaintiffs in the case of GLAXO GROUP LTD. & ANR. Vs. S.D. GARG & ORS. The Hon’ble High Court held that the use of a trade mark, if phonetically similar to another trade mark, would amount to infringement. 

Brief Facts of the Case:

1. Glaxo Group Ltd. (Plaintiff No. 1) is a company incorporated under the laws of the United Kingdom while Plaintiff No.2 was incorporated in India in 1924 under the name of H.J. Foster & Co. It became a wholly owned subsidiary of Joseph Nathan & Co. in 1926. In October 2001, Plaintiff No.2 was renamed as GlaxoSmithKline Pharmaceuticals Ltd, following the merger with SmithKline Beecham Pharmaceuticals (India) with Glaxo India Limited.
2. Plaintiff No. 1 manufactures pharmaceutical products used for the treatment of gastric ailments under the name/trade mark ‘ZANTAC’ and ‘ZINETAC’. Plaintiff No.1 is the owner of the trade marks ‘ZINETAC’ and ‘ZANTAC’, which were registered in the year 1985 and 1981 respectively.
3. The Plaintiffs filed the present case in 2006 against the Defendants and prayed that the medicinal products produced by the Defendants under the name of ‘GENTAC’ amounted to infringement of their registered trade mark ‘ZANTAC’ and ‘ZINETAC’ and passes off the products of the Defendants as that of the Plaintiffs. The Plaintiffs contended that the Defendants’ trade mark was phonetically similar which may cause confusion in the mind of the purchaser.

Relevant Law:

As per section 2(h) of the Trade Marks Act, 1999 deceptively similar means:

“A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion”

Parties’ Contentions:

A. Plaintiffs: GLAXO GROUP LTD. & ANR

The petitioner put forth the following contentions before the Court:

• The Plaintiffs are the owners of the trade marks ZANTAC and ZINTAC and are associated with medicinal preparations which contains ‘Ranitidine Hydrochloride’ used in the treatment of gastric ailments;
• That the packaging and medicinal products produced by the Defendants under the name of GENTAC are deceptively similar which amounts to infringement of their trademarks;
• That there is hardly any discernible difference between the two classes of medicinal products and the difference between ZANTAC and GENTAC is rather difficult to be differentiated by a man with average intelligence;
• That as both parties are involved in the manufacture and trade of identical products, it is possible that the buyers would confuse the Defendant's’ product to be that of the Plaintiffs’

      B. Defendants: S.D. GARG & ORS

• That the trade mark ‘ZANTAC’ is not associated with any medicinal product and that the trade mark is a dummy registration. The Defendant further contended that during the pleadings the Plaintiffs had failed to lead evidence apropos ‘ZINETAC’, hence under such circumstances, they cannot claim any protection of their trademarks;
• That there can be no possible cause for confusion between the two classes of the medicines as the Defendants’ product is exclusively sold in the form of injections whereas the Plaintiffs’ products are being sold in the form of tablets;
• That the medicine GENTAC has been approved by the Drug Licensing Authority to be sold to the public. Accordingly, once the approval of the Drug Licensing Authority is obtained, the Plaintiffs cannot restrain the them from manufacturing the injections;

     Court’s Observations And Order

  

• The Hon’ble Court observed that medicinal product of the Plaintiff under the trade mark ‘ZANTAC’ and ‘ZINETAC’ and the Defendants’ product under the trade mark ‘GENTAC’ contain ‘Ranitidine Hydrochloride’, which is used in the treatment of gastric ailments and the two classes of medicinal products are Schedule ‘H’ drugs;
• The Hon’ble Court was not persuaded by the contention of the Defendants that since the medicinal products can be procured only through a valid prescription there wasn’t any likelihood of confusion in the mind of the buyer. The Hon’ble Court in this regard observed that- while there may be certain amount of assurance to the purchaser of medicines against prescriptions but it does not obviate or negate the likelihood of confusion by an illiterate person or one under stress, given the very high degree of phonetic similarity between the two competitive names for the same cure. The degree of caution in medicinal and surgical products is greater so as to avoid causing any harm to the unsuspecting consumer. Phonetic similarity is vital in the adjudication of a suit for infringement of trade mark apropos medicinal products; 
• The Hon’ble Mr. Justice Najmi Waziri also observed that the English language is not the primary language to many in this country. There is a very large percentage of population who are unaware of the English nuances of the language. The rural population, who are yet to acquire fluency in the language, may be confused by the phonetic similarity between the two classes of the medicinal products;

      In view of the aforesaid, the Hon’ble Court was of the view that the Plaintiffs had made out a case of infringement and passing off by the Defendants and hence was entitled to the protection of their trade mark and grant for decree as prayed for.

  

       Conclusion  

      The Hon’ble Delhi High Court has once again proven that infringement has a wider scope than just    use of a similar mark/logo/color combination.

  

    The case at hand manifests the degree of caution pharmaceutical companies have to employ while choosing trade names for their medicines. The Hon’ble Court has re-affirmed the principle that was established in the famous Cadila Healthcase Case (Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited, 2001 (21) PTC 541 (SC)), wherein the Apex Court had observed that “a stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health.”