ZITA-MET Versus XIGAMET: High Court reiterates position on Trademarks and Pharmaceutical Products

In the case of Glenmark Pharmaceuticals Ltd. v. Gleck Pharma (OPC) Pvt. Ltd., the Bombay High Court observed that while physicians, doctors, and chemists are experts in their fields, they are not infallible. In the context of medicinal and pharmaceutical products, there is no room for error, as even the slightest possibility of a mistake could have serious, potentially fatal consequences for consumers.

FACTS

In this case, The Bombay High Court, presided over by Justice Firdosh Pooniwalla, addressed a dispute between Glenmark Pharmaceuticals Ltd. (Plaintiff) and Gleck Pharma (OPC) Pvt. Ltd. (Defendant) regarding the similarity of their respective trade marks. The Plaintiff requested an ad-interim injunction, arguing that the Defendant's mark, “XIGAMET,” was both phonetically and structurally similar to the Plaintiff's registered mark, “ZITA-MET.” Both marks were used for medicinal products, specifically anti-diabetic drugs.

DECISION OF THE COURT

The Bombay High Court decided to grant the ad-interim injunction in favor of Glenmark Pharmaceuticals Ltd., finding that the Defendant’s mark “XIGAMET” was deceptively similar to the Plaintiff’s registered mark “ZITA-MET.” The Court determined that both marks were phonetically and structurally similar, as they contained the same number of letters and syllables and were used for similar medicinal products. Citing precedents such as Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. and Glenmark Pharmaceuticals Ltd. v. Sun Pharma Laboratories, the Court emphasized that even a slight possibility of confusion between medicinal products could have serious health implications. The Court emphasized that “it is a settled principle of law that physicians, doctors and chemists are not immune to confusion or mistake. It is also common knowledge that consumers often place order for prescription drugs with chemists over the phone and that often the hand written prescriptions are difficult to read. These factors enhance the likelihood of confusion and deception by the chemists and physicians especially in facts such as the present case where the rival trade marks are phonetically and structurally deceptive similar.” The Court dismissed the Defendant’s claim that packaging differences would avoid confusion, ruling instead that the risk of consumer confusion justified issuing the injunction to prevent potential harm.

CONCLUSION

The Bombay High Court granted the ad-interim injunction in favor of Glenmark Pharmaceuticals Ltd., concluding that the Defendant’s mark, “XIGAMET,” was deceptively similar to the Plaintiff’s registered mark, “ZITA-MET.” The Court found that the two marks were phonetically and structurally alike, with both containing the same number of letters and syllables. Since both marks were used for anti-diabetic medicinal products, the Court assessed that there was a significant probability of confusion among consumers.

Additionally, the Court rejected the Defendant’s argument that differences in packaging would mitigate the risk of confusion. It highlighted that the essential features of the marks were more critical than packaging variations. Given that both products treated the same medical condition and were likely to be prescribed or purchased by similar consumer groups, the Court deemed that the potential for consumer deception justified granting the injunction. This decision underscores the importance of maintaining clear and distinct trade marks in the pharmaceutical sector to protect consumer safety and prevent any adverse health outcomes.

References:

1. 2024 SCC OnLine Bom 1660

2. (2001) 5 SCC 73

3. 2024 SCC OnLine Del 2707