Bombay High Court
Laboratoires Griffon Private Limited vs Medieos Lifesciences Llp on 16 July, 2025
2025:BHC-OS:10981
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORIGINAL ORDINARY APPELLATE JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO.25004 OF 2024
IN
COMMERCIAL IP SUIT (L) NO. 208 OF 2024
Laboratories Griffon Private Ltd. & Anr. ... Applicants/Orig.Plaintiffs.
In the matter between:
Laboratories Griffon Private Ltd. & Anr. ... Applicants/Orig.Plaintiffs.
Versus
Medieos Lifesciences LLP and Ors. ... Respondents/Defendants.
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Dr. Veerendra V. Tulzapurkar, Senior Advocate a/w. Mr. Amit Jamsandekar, Mr.
Kiran Mehta and Ms. Archita Gharat i/by Mr. Kiran J. Mehta for
Applicants/Plaintiffs.
Mr. Anand Mohan a/w. Mr. Mahesh Mahadgut (through video conferencing)
and Mr. Kaivalya Shetye for Defendants.
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Coram : Sharmila U. Deshmukh, J.
Reserved on : July 03, 2025
Pronounced on : July 16, 2025
ORDER :
1. The interim application seeks an injunction restraining the Respondents from using the marks "SITAGLIMET", "SITAGLIMET-50", "SITAGLIMET-100", "SITAGLIMET-M 500" and "DAPAGLIMED-10" and any identical/deceptively similar mark so as to infringe the Applicant's marks "GLIMET" and "GLIMET DS" and to pass off the Respondent's products as that of the Applicant.
2. Ex-parte ad-interim relief was granted vide order dated 12 th sa_mandawgad 1 of 26 ia(L)25004-24f(1)recent August, 2024. An Application came to be filed under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 for vacating the ad-interim stay which was rejected by order dated 25th October, 2024 as against which Appeal was preferred by the Respondents which came to be disposed of directing the Interim Application to be decided in time bound manner.
3. Briefly stated the facts are that the Applicants and the Respondents are engaged in business of manufacturing/marketing medicinal and pharmaceutical preparations. In the year 1992, the Applicant No 1 adopted and used the trademark "GLIMET" in respect of its pharmaceutical preparation for treatment of diabetes and applied for registration under No 579544 dated 20 th August, 1992 in Class 05, which was registered in Part "A" of Register of Trade Marks under The Trade and Merchandise Marks Act, 1958. In the year 1999, the Applicant No 1 adopted a variant of its parent mark namely "GLIMET DS" and obtained registration under No 2676118 dated 11 th February, 2014 in Class 05. The Applicant No 2 is the registered user of the trade marks "GLIMET" and "GLIMET DS" under agreement dated 29th May, 1999. To demonstrate goodwill and reputation the sales turnover and the promotional expenses incurred by the Applicant No.2 have been placed on record. The Respondents have applied for registration of their mark "SITAGLIMET" on 7th August, 2023 as sa_mandawgad 2 of 26 ia(L)25004-24f(1)recent proposed to be used and for registration of the mark "DAPAGLIMED" on 25th June, 2024 in Class 5 with user claim of 8th October, 2022.
4. The Applicant's case is that the Respondent's marks are slavish imitation of the Applicant's highly distinctive and prior registered, used and reputed mark and its variant. The Respondents have adopted the whole of the Applicant's mark with the intention to ride upon the Applicant's goodwill and reputation. The Respondent's defence is that there is honest and bonafide adoption of the trade marks 'SITAGLIMET/SITAGLIMET-M" since July, 2022 and 'DAPAGLIMED/DAPAGLIMED-M" since October, 2022 by following industry practice and has derived its mark from the combination of molecules "Dapaglimed/Dapaglimed-M" from the combination of molecules "Dapagliflozin" and "Metformin" and "Sitaglimet/ Sitaglimet-M" from the molecule "Sitagliptin" and "Metformin". The suffix "MED" in "Dapaglimed" signifies Defendant No 1's trading style "Medieos". It is contended that the Applicant's mark is also derived from its ingredients "Glipzide" and "Metformin Hydrochloride". The Respondents have applied for registration of their marks and the rival marks are not phonetically, structurally or visually similar. There is no actionable similarity between the rival marks and the rival packaging, goods are different from each other with no possibility of causing confusion. There is suppression of material fact as the Applicants sa_mandawgad 3 of 26 ia(L)25004-24f(1)recent have failed to bring to the notice of the Court the User Affidavit and the invoices filed in support of the user alongwith the trade mark application and has pleaded that false user has been claimed. SUBMISSIONS:
5. Dr. Tulzapurkar, learned Senior Advocate appearing for the Applicants submits that the registration of the Applicants marks under Part A of The Trade Marks and Merchandise Marks Act, 1958 indicates distinctiveness. He submits that the Applicants are admittedly prior and registered user and the Respondents claim user of the impugned marks since 2022. He submits that the consequence of the deceptive similarity between the two marks which are used for medicinal purpose and for treatment of same ailment would be disastrous as the compositions of the two drugs are different. He points out that the Respondent's mark "SITAGLIMET" has been advertised for registration as word mark on proposed to be used basis, to which opposition has been filed. He would further submit that the application for registration of the marks DAPAGLIMED as word mark has been filed on 25 th June, 2024 with the user detail of 8 th October, 2022.
6. He draws attention of this Court to the various interim orders passed by this Court restraining the use of deceptively similar trade sa_mandawgad 4 of 26 ia(L)25004-24f(1)recent marks such as "GLYNET, DLYMET, ALIMET, GLI2MET, CARGLIMET, ISHGLIMET etc. He would further point out the sales turnover and the promotional expenses certified by the Chartered Accountant to demonstrate goodwill and reputation.
7. He submits that the Respondents have come with a defence of delay whereas factually there is no delay and secondly, it is well settled that delay is not a defence available in case of infringement of trade mark. He submits that the Applicant's mark was already registered and it not the case of the Respondents that search was conducted in the trade mark registry before adopting the trade marks and thus the adoption is at the Respondent's own peril drawing support from the decision in the case of Bal Pharma Ltd. vs. Central Pvt. Ltd.1 He submits that in such cases the Court have held the balance of convenience is not in favour of such a person. He submits that the Applicant's entire mark has been subsumed in the Respondent's mark and it is well settled that where the entire mark is incorporated in rival mark, deceptive similarity is established. He would submit that the first user rule should be applied and injunction should follow as infringement is demonstrated. He would submit that as the rival marks are phonetically and visually similar the act of infringement is completed under Section 29 of the Trade Marks Act.
1 (2001) SCC OnLine Bom 1776
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He submits that as the present case is of infringement of word mark, the difference in packaging is immaterial.
8. He would further submit that the public interest would support lessor degree of proof showing confusion similarity in the case of trade mark in respect of medicinal products as against non medicinal products which has been settled by the Hon'ble Apex Court in the case of Cadila Health Care Ltd. (supra).
9. He submits that as far as the defence of suppression of material fact is concerned, the Application under Order XXXIX Rule 4 of CPC proceeded on the basis that the affidavit of user by the Respondents which was filed and available on the trade mark registry was not disclosed at the time of hearing of ex parte ad-interim relief. He submits that it is specifically pleaded in the plaint that the Respondents have applied for registration of its marks and the affidavit of user would be an aspect of evidence which is not required to be pleaded. He submits that if the Respondents were prior user then the same would constitute a material fact. He submits that the defence that the impugned mark is coined from the ingredients cannot be accepted as the rival marks will have to be compared and the ingredients of both the products are different. In support, he relies on the following decisions:
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(i) Bal Pharma Ltd. vs. Centaur Laboratories Pvt. Ltd.2
(ii) M/s.Hindustan Pencils Private Limited vs. M/s. India Stationery Products Co. & Anr.3
(iii) Midas Hygiene Industries (P) Ltd. and Anr. vs. Sudhir Bhatia and Ors.4
(iv) Emcure Pharmaceuticals Ltd. vs. Corona Remedies Pvt.Ltd.5
(v) Sun Pharma Laboratories Ltd. vs. Narender Kumar and Ors.6
(vi) Lupin Limited vs. Eris Lifesciences Pvt.Ltd. And ors.7
(vii) Neon Laboratories Limited vs. Medical Technologies Limited and Anr.8
(viii)Amritdhara Pharmacy vs. Satya Deo Gupta 9
(ix) Renaissance Hotel Holdings Inc. vs. Vijaya Sai and Ors.10
(x) Ruston & Hornsby Ltd. vs. The Zamindara Engineering Co.11
(xi) Mangi Lal vs. The State of Maharashtra12
(xii) Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.13
(xiii)Macleods Pharmaceuticals Ltd. vs. Union of India and Ors.14
(xiv)Franco Indian Pharmaceuticals Pvt.Ltd. vs. Corona Remedies Private Limited15
10. Per contra, Mr. Mohan, learned counsel appearing for the Respondents submits that as far as the aspect of suppression of 2 2001 SCC OnLine Bom 1176 3 ILR (1989) Indian Law Reports (Delhi) 116 4 (2004) 3 SCC 90 5 2014 SCC OnLine Bom 1064 6 2024 SCC OnLine Del 2193 7 2015 SCC OnLine Bom 6807 8 (2016) 2 SCC 672 9 (1963) 2 SCR 484 10 (2022) 5 SCC 1 11 1969 (2) SCC 727 12 1969 (2) SCC 731 13 (2001) 5 SCC 73 14 2023 SCC OnLine Bom 408 15 Petition(s) for Special Leave to Appeal (c) No.(s).3509/2023 sa_mandawgad 7 of 26 ia(L)25004-24f(1)recent material fact is concerned, the pleading in the plaint is that the Respondents claim false user since the year 2022 and therefore, the suppression of the affidavit of user assumes significance. He would submit that the packaging/get up of the rival products are distinct and separate and therefore there is no question of any confusion. He submits that there is no actionable similarity between rival marks and in Cadila Health Care Ltd. (supra) it has been laid down by the Hon'ble Apex Court that the surrounding circumstances are required to be examined. He submits that the Applicants neither claim monopoly in their labels nor alleges that rival packages/labels are actionably similar and therefore no case for grant of interim relief is made out. He submits that the Respondents are not fly by night operators and are established pharma companies operating since 2015 with all relevant licenses, quality checks and registration.
11. He submits that in the specific context of pharmaceutical goods, the rival marks are derived using elements of the active ingredients and/or company name and a blend of the same which is recognised as honest and wide spread industry practice in the pharmaceutical trade. He submits that the Applicants cannot be permitted to claim monopoly by using prefixes/suffixes borrowed from active ingredient names and/or company name and every one who adopts the mark in this manner does so at the peril of other using the same approach.
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12. He submits that it is not the Respondent's case that the
Applicant's mark is invalid but that as the Applicant's mark is
distinctive so is the Respondent's mark. He submits that the competing marks are not similar as (a) GLIMED begins with the "G" whereas DAFAGLIMED and SITAGLIMET begin with distinctive hard consonants "D" and "S", (b) Glimet has two syllables and the Respondent's marks are four syllables long putting sufficient distance between the two marks, (c) the opening syllables are different in the competing marks, (d) Respondent's mark are likely to be pronounced with the "g" in the middle being slurred over and (e) there is no visual, phonetic or structural similarity. In support, he relies on the following decisions:
(i) Corona Remedies Private Limited vs. Franco-Indian Pharmaceuticals Private Limited16
(ii) Macleods Pharmaceuticals Ltd. vs. Swisskem Healthcare and Anr.17
(iii) Ajanta Pharma Limited vs. Theon Pharmaceuticals Limited and Anr.18
(iv) Maganlal Kuberdas Kapadia vs. Themis Chemicals Ltd.19
(v) Bhaskar Laxman Jadhav and Ors.vs. Karmveer Kakasaheb Wagh Education Society and Ors.20
(vi) Ajanta Pharma Limited vs. Theon Pharmaceuticals Limited21
13. In rejoinder Dr. Tulzapurkar would submit that the registration 16 MANU/MH/0410/2023 17 2019 SCC OnLine Bom 1186 18 2016 SCC OnLine Bom 10469 19 In Appeal No.332 of 1991 dated 22nd April, 1991 20 (2013) 11 SCC 531 21 2016 SCC OnLine 10469 sa_mandawgad 9 of 26 ia(L)25004-24f(1)recent of the Applicant's mark under Part A of the old Act gives a distinctiveness. He submits that the decision in the case of Corona Remedies Private Limited (supra) was carried to the Hon'ble Apex Court and the order was not interfered with the clarification that the observations made in the impugned judgment are not to be treated as binding observations in the pending proceedings or which may be initiated under the Trade Marks Act, 1999. He would submit that the decisions relied upon by Mr.Mohan have been considered in the case of Macleods Pharmaceuticals Ltd. (supra) and disregarded. He submits that there is no answer on the disastrous consequences of the use of the similar marks which is essential to be considered. He submits that there is no denial that the ingredients of both the products are different. He submits that the fact that the packaging is different is immaterial as the challenge is to the use of the word mark.
REASONS AND ANALYSIS:
14. The rival marks, which are word marks are reproduced herein below for comparison:
Plaintiff's Mark Defendant's Mark
GLIMET SITAGLIMET
GLIMET-DS DAPAGILMED
15. The rival marks are used in marketing of drugs meant for treatment of the diabetes and it is now well-settled that where an sa_mandawgad 10 of 26 ia(L)25004-24f(1)recent action for infringement is instituted in respect of medicinal/ pharmaceutical preparation, stricter test is required to be applied as the aspect of public interest is involved and any confusion in minds of the public can result in disastrous effect.
16. As far as the Applicant's marks are concerned, there can be no debate about prior use and registration. The Applicant's mark "GLIMET" is registered in the the year 1999 under Part "A" of the Trade and Merchandise Marks Act, 1958 (Act of 1958). Under Section 9 of the Act of 1958, for registering a mark in Part "A" of the Register the requirement is that it should contain or consist of at least one of the following essential particulars:
(a) The name of company, individual or firm represented in special or particular manner.
(b) The signature of the applicant for registration or some predecessor in his business.
(c) One or more invented words
(d) One or more words having not direct reference to character or quality of goods and not being according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of sect, caste or tribe in India.
(e) any other distinctive mark.
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The requirements to be met for qualifying for registration under Part "A' prima facie establishes inherent distinctiveness of the mark and absence of descriptive flavour.
17. At the same time, it needs to be noted that that it is practice in the field of medicinal and pharmaceutical preparations to derive/coin trade marks from (a) the generic names of the components/molecule, or, (b) the disease which the drugs are meant to cure, or (c) the body organ for which the drug is used, or (d) the stream of science to which the drug belongs. [See Macleods Pharmaceuticals Ltd vs Swisskem Healthcare and Another (supra)].
18. The Respondents seek to escape the liability of infringement and passing off by relying upon the well known trade practice of using the generic names of the components as trade mark. To test the defence, it will be necessary to consider the compositions of the rival drugs. The Applicant's drug marketed under the mark "GLIMET" contains "Glipizide 5 mg and Metformin Hydrochloride 500 mg" as its ingredient whereas the Respondent's drug bearing the mark "SITAGLIMET" contains "Sitagliptin 50 mg and Metformin Hydrochloride 500 mg" and "DAPAGLIMED" contains "Dapaglipflozin 10 mg" as its ingredient drugs. The composition of the Applicant's and the Respondent's drug is different though both are used in treatment sa_mandawgad 12 of 26 ia(L)25004-24f(1)recent of diabetes in tablet form. The Applicant's drug is priced at Rs.195/-, whereas Sitaglimet-M 500 is priced at Rs.237/-, Sitaglimet-50 is priced at Rs.289/- and Dapaglimed is priced at Rs.357/-. Considering the pricing there is not a marked difference in the pricing of the drugs.
19. In the context of passing off action in respect of medicinal preparations, the Hon'ble Apex Court in Cadila Health Care Ltd vs Cadila Pharmaceuticals Ltd (supra), laid down the principles to be followed while dealing with the action for infringement or passing off in case of medicinal and pharmaceutical preparations. In the facts of that case, both the drugs were meant to cure cerebral malaria and competing trade marks were "FALCIGO" and "FALCITAB". Though the Hon'ble Apex Court declined to interfere with the refusal of grant of interim injunction, the reason for non interfering with the order was the possibility of evidence being required on merits. The Hon'ble Apex Court held in paragraph 25, 26 and 32 as under:
"25. The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendant's drug, of which passing-off is alleged, is meant for curing the same ailment as the plaintiff's medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems. In this regard, reference may usefully be made to the case of Glenwood Laboratories, Inc. v. American Home Products Corpn. 17 where it was held as under:
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"The products of the parties are medicinal and the applicant's product is contraindicated for the disease for which opposer's product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under circumstances it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals."
26. It was further submitted on behalf of the appellant that although the possibility of confusion in a drug being sold across the counter may be higher, the fact that a drug is sold under prescription or only to physicians cannot by itself be considered a sufficient protection against confusion. The physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provisions for mistake since even a possibility of mistake may prove to be fatal.
32. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal products as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edn., para 23.12 of which reads as under:
"The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have sa_mandawgad 14 of 26 ia(L)25004-24f(1)recent disastrous effects. For these reasons, it iS proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints."
20. The tests laid down by the Hon'ble Apex Court can be broadly summarised as under:
(a) Where the drugs have marked differences in composition with completely different side effects, the test should be stricter.
(b) The Courts are required to be vigilant where the Defendant's drug, of which passing off, is alleged is meant for curing the same ailment.
(c) Public interest would support lesser degree of proof showing confusing similarity in case of the infringement of trademark of medicinal product as compared to non- medicinal products.
(d) Many patients may be elderly, infirm or illiterate and may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them.
(e) The fact that the drugs are sold under prescription is not sufficient to prevent confusion in view of the varying infrastructure for supervisions of physicians and pharmacists of medical profession in India due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence required strict measures.
(f) In case of passing off, one of the test is whether there is likelihood of causing an ordinary consumer being confused between one product and another due to similarity of marks and other surrounding circumstances.
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(g) It is also important that the marks must be compared as wholes. It is to right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in mind of persons accustomed to the existing mark.
21. What is thus required is a exacting judicial scrutiny on the principles laid down by the Hon'ble Apex as the consequence of mis- administration of the drug would be catastrophic. It is not the Applicant's case that its registered mark "GLIMET" has been appropriated from the active pharmaceutical ingredients but the Respondents who claim that both the Applicant's and Respondent's marks have been derived using elements of the active ingredients and/or company name and mashing them together in a pormanteau. The Respondents are careful in their submissions and do not raise any challenge to the validity of the Applicant's mark, which even otherwise they could not have, as the Respondents have themselves applied for registration of their marks derived from the generic drugs. What the Respondents does is accepts the distinctiveness of the Applicant's mark but claims the same distinctiveness in its mark based on honest and established pharma business of deriving its mark from the ingredients of the drug to escape the liability of infringement.
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22. The issue is thus not of validity of the Applicant's trademark but whether exclusive right can be claimed on the ground of actionable similarity between the rival marks thereby entitling interdiction against the Respondent to its use, the composition of rival drugs being different. Section 28 of Trade Marks Act, 1999 confers upon the registered proprietor the exclusive right to use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement. Section 29 dealing with infringement of trade mark provides that the registered mark is infringed by use of an identical or deceptively similar trade mark. Section 2(h) of Trade Marks Act, 1999 defines deceptive similarity to mean where the mark so nearly resembles the other mark as to be likely to deceive or cause confusion. Section 29(9) of Trade Marks Act, 1999 dealing with infringement provides that where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by spoken use of those words. As held in the case of Renaissance Hotel Holdings Inc Vs B. Vijaya Sai (supra), the use by the Defendant of the trade mark of the Plaintiff is a sine qua non in case of an action for infringement. The marks therein "Renaissance" and "Sai Renaissance" were held to be phonetically and visually similar and Section 29(9) of Trade Marks Act, 1999 was applied to constitute the use of the word" Renaissance" in the impugned mark sa_mandawgad 17 of 26 ia(L)25004-24f(1)recent as an act of infringement.
23. In Emcure Pharmaceuticals Ltd vs Corona Remedies Pvt Ltd (supra), the Co-ordinate Bench of this Court while considering the marks "OROFER" and "COROFER" accepted the submission that where the entire mark is incorporated in the rival mark, deceptive similarity is established. The Court held that the test is to juxtapose the two marks and then ask what might be the likely effect on the mind of a person of average intelligence and imperfect recollection.
24. Applying the said test to the present case, the Applicant's mark "GLIMET" is word mark and as far as the impugned mark "SITAGLIMET" is concerned, the Applicant's entire registered mark is subsumed in the Respondent's mark. As far as the mark "DAPAGLIMED" is concerned, the Respondents have substituted the last alphabet "T" with "D" and added the prefix "Dapa". In hurried and fast utterance of the marks, there is propensity of slurring over the last alphabet leading to similar sounding pronounciation. In the written submission filed by the Respondents, it is stated that there is possibility of "g" being slurred over and mark being pronounced as "Da Pa Li Met". The Respondent also accepts that there will be similar sounding pronunciation of the last alphabet "D" as "T". Applying the test laid down in Emcure Pharmaceuticals Ltd (supra), when the entire mark sa_mandawgad 18 of 26 ia(L)25004-24f(1)recent "GLIMET" is subsumed in mark "SITAGLIMET" and "DAPAGLIMED", it is difficult to accept that the patient would recollect the entire mark of the drug he intended to purchase and when confronted with the rival drugs will be left in a state of wonderment and would be confused as to the actual product to be used, which may prove disastrous.
25. The rival drugs are used for treatment of diabetes which is common ailment transcending all strata of society and there is likelihood of the drugs being sold over the counter even if they are prescription drugs. Applying the well established test of an average consumer with imperfect recollection there is likelihood of confusion being caused by the deceptive similarity. The mark has to be viewed as a whole and not be dissected in fragments and meticulously compared word to word and syllable to syllable to ascertain similarity.
26. As held in the case of Cadila Health Care Ltd. vs Cadila Pharmaceuticals Ltd (supra) what has to be seen in an action of a passing off action is the similarity of the competing marks and to determine whether there is likelihood of deception or causing confusion with stricter test being applied in medicinal preparations.
27. The Applicants mark "GLIMET" is in the field since the year 1992 whereas the Respondent is a late entrant and has adopted the marks in the year 2022. Being a registered mark, prima facie, the marks are sa_mandawgad 19 of 26 ia(L)25004-24f(1)recent distinctive. The defence of honest trade practice in pharmaceutical field to derive the mark from the active pharmaceutical ingredients cannot be accepted for the reason that it is not a case of comparison between the invented part of the mark as distinguished from the generic drug but a case of combination of two generic drugs in a distinct combination. The exclusivity lies in the unique combination of the two generic drugs. There are a number of permutations and combinations available in case of two or more generic drugs and there is no reason for the Respondents to chose the exact combination of the ingredient drugs for use as a mark which closely resembles the Applicant's registered trade mark. The Applicant's mark as well as the Respondent's mark is prima facie a combination of two compounds and the fusion of the two compounds in exact manner with a prefix prima facie amounts to deceptive similarity. It has been held that the mere existence of slightest probability of confusion in case of medicinal product marks, requires that the use of such mark be restrained. (See M Macleods Pharmaceuticals Ltd vs Union of India). The Applicant's opposition to the impugned marks on the touchstone of deceptive similarity of the rival marks is prima facie acceptable. The aspect of the packaging dis-similarity has no relevance in action for infringement of word mark. In Ruston & Hornsby Ltd vs The Zamindar Engineering Co. (supra), the Hon'ble Apex Court observed in sa_mandawgad 20 of 26 ia(L)25004-24f(1)recent paragraph 6 as under:
"6. The two actions, however are closely similar in some respects. As was observed by the Master of the Rolls in Saville Perfumery Ltd vs June Perfect Ltd:
"The statute law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passing off. But it differs from that law in two particulars namely (1) it is concerned only with one method of passing off namely the use of trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of registered proprietor. Accordingly, in considering the question of infringement the Courts have held and it is now expressly provided by the Trade Marks Act, 1938 Section 4 that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive."
28. In the instant case, the deceptive similarity between the rival marks is prima facie calculated to deceive. In Sun Pharma Laboratories Ltd vs Narender Kumar & Ors (supra), the Hon'ble Delhi Court noted the decision of Hon'ble Apex Court in case of Saytam Infoway Ltd vs Sifynet Solutions (P) Ltd22 that the triple test to be applied in case of passing off is volume of sale and extent of advertisement, misrepresentation by the Respondent to the public and loss or likelihood by reason thereof. The Applicant is user of the mark since the year 1992 and the sales turnover for the year 2022-
22 (2004) 6 SCC 145
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2023 (unaudited) for "GLIMET" and "GLIMET- DS" is given at Rs.1,95,73,672/- and the quantity sold was 2,76,428 which averages to about 767 packs being sold every day. The promotional expenses are Rs.1,29,545/- with the regulatory restrictions relating to promotion of prescription drugs. The use of the resembling combination of the ingredients of the drugs, though the rival drugs are of different composition, prima facie indicates misrepresentation and to take advantage of the reputation and goodwill of the Applicant making out prima facie case of passing off. The Applicant has been using the registered mark since the year 1992 and use of deceptively similar mark by the Respondent in respect of drug used for treating the same ailment would prima facie result in loss to the Applicant and thereby the balance of convenience is in favour of Applicant. The Respondents have not cared to take a search of the trade mark registry before adopting the mark and for the consequences, the Respondents have themselves to blame.
29. According to Mr. Mohan, the Applicants having come with unclean hands makes it inequitable to grant any interim relief. The suppression alleged is that the Affidavit user had not been produced alongwith the Respondent's trade mark application and plaint pleads case of false user claim of Respondent since the year 2022.
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30. Perusal of the plaint would indicate that the Applicants in
paragraph No.14 have specifically pleaded that the Applicants became aware of the Respondent's application for registration of the mark SITAGLIMET on proposed to be used claim after its advertisement in trade marks journal on 12 th February, 2024 and had filed opposition application. The plaint thereafter in the subsequent paragraphs plead about the products of the Respondent's being marketed under the impugned marks online as well as offline. In paragraph 20, it is pleaded that the Applicants conducted search in the records of trade mark registry and found that the Respondent No 1 has applied for registration of impugned mark "DAPAGLIMED-10"
with a false user claim of 8th October, 2022. The suppression should be of material fact. The material fact is the trade mark applications by the Respondents which gives details of the user claim, the application etc, which have been candidly disclosed by the Applicant. The non production of Affidavit user, which is a document to show the use of the mark by the Respondent does not amount to suppression of material fact.
31. The decision of Corona Remedies Pvt Ltd vs Franco-Indian Pharmaceuticals Pvt Ltd (supra) was challenged before the Hon'ble Apex Court and the order was not interfered with the clarification that the observations will not be treated as binding observations in sa_mandawgad 23 of 26 ia(L)25004-24f(1)recent the pending proceedings or which may be initiated under the Trade Marks Act, 1999. Mr. Mohan would however rely on the decisions cited and considered in Corona Remedies Ltd (supra), to emphasis the common trade practice of use of the ingredient drugs as marks. The decisions referred to in Corona Remedies Ltd were considered by the Hon'ble Division Bench in Macleods Pharmaceuticals Ltd vs Union of India (supra) and greater significance was given to the aspect to confusion and it was held that the Court may not speculate as to whether there is probability of confusion between the marks. That apart, in the factual scenario of most of the decisions which declined to grant injunction, the rival marks were appropriated from the common active pharmaceutical ingredient, whereas in the present case the compositions of both the drugs are different which is the distinguishing features. Greater care is expected when the compositions differ as the consequence of confusion may have greater impact on health, which is non-negotiable.
32. In Macleods Pharmaceuticals Ltd vs Swisskem Healthcare and Another(supra) the rival marks were "Polyderm" and "Panderm",which marks contained the suffix of branch of science. The Court considered the aspect of similarity of the prefix "Poly" and "Pan" and did not find reasonable possibility of confusion. Pertinently, it held that each case is required to be decided on its own facts and the authorities are sa_mandawgad 24 of 26 ia(L)25004-24f(1)recent binding for the principle laid down and not for facts.
33. In light of the above discussion, prima facie case is made out for infringement of trade mark and passing off entitling the Applicant to interim reliefs in terms of prayer clause (a) and (b) which reads as under:
"a) that pending the hearing and final disposal of the suit, the Respondents by themselves, their partners, directors, associate/s, sister/group companies, employees, servants, agents, dealers, stockist, distributors, assignees, licensees and all those connected with them in their business be restrained by a temporary order and injunction of this Hon'ble Court from using, manufacturing, marketing, distributing, stocking, selling, importing, exporting, promoting, publishing, advertising, exhibiting, displaying or offering for sale in shops or on their websites or on third party website or on social media or on e-commerce sites and/or using in any manner in relation to their medicinal and pharmaceutical preparations the trademark SITAGLIMET, SITAGLIMET-SO, SITAGLIMET-100, SITAGLIMET-M 500 and DAPAGLIMED-10 or any mark identical and/or deceptively similar thereto and any mark identical and/or deceptively similar to the Applicant No.1's trademarks GLIMET registered under No.579544 and GLIMET DS registered under No.2676118 both in class 05, so as to infringe the 1s Applicant's registered trademarks;
b) that pending the hearing and final disposal of the suit, the Respondents by themselves, their partners, directors, sister/group companies, employees, servants, dealers, stockist, distributors, agents, assignees, licensees and all those connected with them be restrained by a temporary order and injunction of this Hon'ble Court from using, manufacturing, marketing, distributing, stocking, selling, importing, exporting, promoting, publishing, advertising, exhibiting, displaying or offering for sale in shops or on their websites or on third party website or on social media or on e-commerce sites and/or using in any manner in relation to their medicinal and pharmaceutical sa_mandawgad 25 of 26 ia(L)25004-24f(1)recent preparations the trademark SITAGLIMET, SITAGLIMET-SO, SITAGLIMET-100, SITAGLIMET-M 500 and DAPAGLIMED-10 or any mark identical and/or deceptively similar thereto being confusingly similar to the Applicant's marks GLIMET and/or GLIMET DS so as to pass off or enable others to pass off the Respondents goods as and for that of the Applicants;
34. Interim Application is allowed in above terms.
[Sharmila U. Deshmukh, J.]
sa_mandawgad 26 of 26
Signed by: Sanjay A. Mandawgad
Designation: PA To Honourable Judge
Date: 16/07/2025 20:24:17