Del HC | Ajanta Pharma injuncted from selling its nutraceutical product GLOTAB in passing off suit brought by Sun Pharma; principles reiterated

Delhi High Court: Pratibha Singh, J., while allowing the suit brought by Sun Pharma Laboratories Ltd., passed an order injuncting Ajanta Pharma Ltd. from selling any medicinal preparations, nutritional food supplements or any other preparations for human consumption for treating any illnesses or diseases under the trademark GLOTAB or any other mark identical or deceptively similar to the Sun Pharma’s mark GLOEYE.

The dispute between the plaintiff and the defendant was is in respect of two products used by patients of the age-related dimness of vision and diabetic retinopathy. They are sold under the trademarks GLOEYE and GLOTAB, respectively. Both are ocular medicines. Since they contain plant extracts, they are termed as “nutraceuticals” under Section 22 of the Food Safety and Standards Act, 2006.

Plaintiff’s case was that it commenced use of the mark GLOEYE in July 2005 and it was their registered mark. The defendant was also using the mark GLOTAB for the same purpose, i.e. medicine used by patients for the age-related dimness of vision and diabetic retinopathy. Incidentally, defendants mark was also a registered mark. The defendant was using the said trade mark since 2013. The plaintiff filed the present suit for an interim injunction.

Since both the trademarks were registered, the case for infringement of trademark could have been maintainable; thus,  the suit proceeded on the principles of “passing off”, as recognised under Section 27(2) of the Trade Marks Act, 1999. The High Court considered the question — is the test for infringement and passing off for nutraceutical products the same as the test applicable for pharmaceuticals?

Kapil Wadhwa, Devyati Nath and Deepika Pokharia, Advocates representing Sun Pharma, submitted that it was a clear prior user of the said mark by atleast 8 years. Mr Wadhwa submitted that the fact that the composition of two products is different enhances the chances of confusion, especially in products that are consumed for the same ailments. Per contra, Senior Advocate Sandeep Sethi, Jayant Mehta, Afzal B. Khan and Suhrita Majundar, Advocates appearing for Ajanta Pharma, resisted the suit. Mr Mehta submitted that both the products are prescription drugs, and the prefix ‘GLO’ is common to the trade. In addition, Mr Sethi submitted that since there had been no confusion for the last 6 years, this was not a case for grant of interim injunction.

The High Court found that nutritional food supplements and nutraceuticals are akin to medicines and pharmaceutical preparations. Reliance was placed on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 for the proposition that — “in respect of medicines and pharmaceuticals deception and confusion need to be avoided.”

Holding that the tests laid down in Cadila case were fully applicable to the present case, the Court observed: “the mere fact that these products are nutritional food supplements or nutraceuticals and are not pharmaceuticals in the strict sense is not convincing enough for adoption of a less stringent test … The mere fact nutraceuticals are termed so, as they contain ingredients derived from plants, does not mean that a lenient test needs to be adopted in respect of these products. The effects of the products and the consumers of the products all being similar in nature, the test applicable to pharmaceutical products would be applicable even to nutraceuticals. The Court, thus, rejected the defendant’s contention that the decision in Cadila case was not applicable.

Comparing the two products, the Court found that while both products are used for similar medical conditions and are anti-oxidant retinopathy drugs, there are marked differences between the two products. The Court was of the view that the two products were used for treating similar medical conditions, and it was not possible to accept the defendant’s explanation that it was a bona fide adopted of the mark GLOTAB. Moreover, the following were the factors which persuaded the Court to hold that the defendant’s mark was deceptively similar to that of the plaintiff’s mark:

a) ‘GLOTAB’ and ‘GLOEYE’ have the same prominent prefix, namely, ‘GLO’;

b) The Plaintiff’s product ‘GLOEYE’ is a tablet. ‘TAB’ is nothing but a short form for ‘tablet’;

c) The composition of these two products is different though both are ocular medicines.

d) The suffixes ‘EYE’ and ‘TAB’ in fact do not sufficiently distinguish the two products – and in fact, enhance the chances of confusion;

e) Both are nutritional food supplements. Both contain bilberry extract, but the remaining ingredients are different;

f) The chances of ‘GLOTAB’ being prescribed in place of ‘GLOEYE’ or a patient being dispensed with ‘GLOTAB’ in place of ‘GLOEYE? is quite high and cannot be eliminated

It was also observed that: “the settled law in passing off is that of probability or likelihood of confusion and not actual confusion. In Cadila, the Supreme Court has warned that in case of products used for the same ailments but with different composition, a more stringent test needs to be adopted.”

Holding that the nutraceuticals ought to be treated on par with pharmaceuticals, and applying the principles laid down in Cadila case, the Court held that Sun Pharma was entitled to an interim injunction. For all the above reasons, Ajanta Pharma was restrained as already mentioned above. Since Ajanta Pharma’s manufacturing license was of 2013, it was permitted to sell existing stock of its products and packaging under the mark GLOTAB subject to filing quarterly accounts of the same.[Sun Pharma Laboratories Ltd. v. Ajanta Pharma Ltd., 2019 SCC OnLine Del 8443, decided on 10-05-2019]

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