In this case, Glaxo Group Ltd. and Ors. (Hereinafter referred to as Glaxo) instituted a suit seeking permanent injunction against S.D. Garg (hereinafter referred to as Garg) to restraint them from infringement of their Trademarks “ZANTAC” and “ZINETAC”. Brief facts of the case are as follows:
- Glaxo is the proprietor of the mark “ZINETAC” and “ZANTAC” for which registration was obtained in the year 1985 and 1981 respectively. And, the trademarks were used with respect to medical product containing “Ranitidine Hydrochloride” which is primarily used for treatment of gastric ailments.
- Garg received the permission from Drug License authority for their medicine “GENTAC” and accordingly they have been selling their medicine under the mark “GENTAC”.
- Hence, the suit was brought by Glaxo contending that Garg is infringing their rights by use of mark “GENTAC” which is deceptively similar to their marks “ZANTAC” and “ZINETAC”.
Arguments
By Glaxo i.e., Plaintiff
- That “ZANTAC” is an invented term, having no dictionary meaning thereby containing high degree of distinctiveness. And, Glaxo has been using the two trademarks i.e., “ZANTAC” and “ZINETAC” consistently and extensively to the extent that a common man associates the marks for treatment of gastric ailment.
- That although the product of Glaxo and Garg are administered in different forms, it will not affect their position in the suit for infringement. Putting forth the precedent set in Cadila Health Care Limited v. Cadila Pharmaceuticals Limited {AIR 2001SC 1952}, it was contented by Glaxo that in a suit for infringement, the confusion which infringing product is likely to cause is to be considered rather than the manner of administration of product.
- That both the parties are selling similar class of medical products, and there is hardly any difference between their marks and that of Garg’s. Such action amounts to passing-off and infringement of marks of Glaxo.
- That this is not the first time Garg has attempted to ride upon hard-earned reputation and goodwill of Glaxo. Hon’ble Delhi Court had passed injunction relief in favour of Glaxo, when a suit was brought against Garg wherein, they started to infringe the mark of Glaxo, “BETNOVATE” by using a deceptively similar mark, “BECNATE”.
By Garg i.e., Defendant
- That Glaxo cannot claim protection of their trademarks since the registration of mark “ZANTAC” is dummy, no medical product is sold by Glaxo having such mark and no evidence has been produced before this court for the use of mark “ZINETAC”.
- That there can be no possibility of confusion between the mark “GENTAC” and marks of Glaxo, because firstly Garg’s product is sold in form of injection whereas Glaxo’s product is sold in form of tablet. And secondly because, both the marks are used in respect of “Schedule-H” drugs which can only be sold by chemist on prescription of registered medicinal practitioner.
- That Drug Licensing Authority has given approval for the medicine, “GENTAC”, to be sold to the public and accordingly Glaxo cannot prevent them from manufacturing the medicine.
Judgement
Hon’ble Delhi High Court observed that while adjudicating upon suit for trademark infringement, it is required to consider mark in its entirety. While citing the decision of Hon’ble Supreme Court in Cadila Healthcare(supra) court observed that since the marks in question are with respect to medicinal preparation a higher degree of scrutiny is to be done.
The Court was unpersuaded by the contentions of Garg that since the marks in question are with respect to ‘Schedule-H’ drugs which can only be procured through valid prescription there wasn’t any likelihood of confusion in the mind of the buyer. It was observed by court that:
“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 in greater so as to avoid causing any harm to the unsuspecting consumer……. It is important to note 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. Though the medicines are used in the treatment of the same ailment, it does not negate the possibility of side effects from the medicines.”
Thus, contentions made out by Garg were rejected by court and it was held that Glaxo has made out a case of infringement and passing off by Garg, Glaxo is entitled to protect their trademarks and decree was made out in favour of Glaxo.
By: Dhruv Dangayach, Ramaiah College of Law
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