Two Pharmaceutical companies indulged into a trade mark war wherein the marks of the ocular nutraceutical medicines manufactured by each company were deceptively similar. The substantial question involved in the present matter was whether the test for infringement and passing off for nutraceutical products same as the test applicable for pharmaceuticals. The judgement, after weighing each parameter extensively, was pronounced by the single judge bench of Justice Pratibha M. Singh in the Delhi High Court on May 10, 2019.
The brief facts involved in this case were, the Plaintiff, Sun Pharma Laboratories Limited and the Defendant, Ajanta Pharma Ltd., manufactured medicines used by patients of age related dimness of vision and diabetic retinopathy. They were sold under the trademarks “GLOEYE” and “GLOTAB” respectively, both being ocular medicines. These medicines contain plant extracts and are termed as ‘nutraceuticals’.
The Plaintiff was the prior user of its mark with high amount of annual sales and promotional expenditure, whereas, the sales of the Defendant were miniscule. Upon the perusal of the two products the difference between the two products were highlighted wherein there were differences in the composition, ingredients, dosage and side effects of the two medicines.
The defendant contended that the word “GLO” is common to trade. However, the search report produced by the Defendant proved otherwise. With respect to ocular medicines, there were only the medicines of the Defendant and the Plaintiff comprising ‘GLO’ prefix marks.
The court paraphrased the test to be applied as under:
i) In the case of drugs, a strict test needs to be applied for determining confusion and deception;
ii) If the products have a difference in composition with completely different side effects, a stricter test should be applied;
iii) Greater vigilance is required where the products are meant to cure the same ailments, but the compositions are different;
iv) Merely because drugs are sold under prescription is not sufficient protection against confusion;
v) The prevalent social conditions and linguistic barriers require stricter measures to be taken, to prevent confusion arising from similarity of marks among medicinal products;
vi) Physicians and pharmacists are not immune to mistakes;
vii) A lesser degree of proof to establish confusing similarity would be required in the case of medicinal products as against nonmedicinal products;
viii) The varying profiles of patients, especially the elderly, illiterate persons and children need to be kept in mind;
ix) In view of public health issues involved in the case of medicines, stringent measures ought to be adopted.
This Court was of the opinion that the mere fact that these products were nutritional food supplements or nutraceuticals and were not pharmaceuticals in the strict sense was not convincing enough for adoption of a less stringent test. Pharmaceuticals and nutraceuticals are used in respect of diseases and disorders. They are both meant to address specific ailments. Both these products are meant to improve the health of patients. The mere fact that 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.
This Court, in its final analysis, held that nutraceuticals ought to be treated at par with pharmaceuticals. The competing products in this case:
- Broadly belonged to the same class of ocular medicines used to treat age related dimness of vision and diabetic retinopathy;
- Had different ingredients;
- The suffixes EYE and TAB are insufficient to create any distinction between “GLOEYE” and “GLOTAB”;
Hence, the Plaintiff was entitled to an interim injunction. For all the above reasons, the Defendant was restrained from selling any medicinal preparations, nutritional food supplements or any other preparations for human consumption for treating any illnesses, disorders or diseases under the trademark “GLOTAB” or any other mark identical or deceptively similar to the Plaintiff’s mark “GLOEYE”.
The present need is for strong pharmaceutical trademarks. This is important not only for doctors and other medical practitioners, but also for the general public, who frequently practice self-medication. It is therefore important that pharmaceutical companies not adopt trademarks that are deceptively similar. The public interest lies in protecting the consumer against an unwary purchase of a deceptively similar product and the consumer must be protected against a reasonable possibility of confusion arising out of a deceptively similar mark. This judgement coherently yields a clarification with respect to the test that has to be applied for medicines of every classification and genus and sets a valuable precedent for pharmaceutical companies seeking effective reliefs against the violators of their intellectual property.