The Division Bench of the Delhi High Court, recently, upheld the injunction granted in favour of Sun Pharma Laboratories Ltd. (“Sun Pharma”) against Glenmark Pharmaceuticals’ (“Glenmark”) use of the mark INDAMET, owing to its deceptive similarity to Sun Pharma’s mark ISTAMET XR CP. Glenmark contented that the predecessor of Sun Pharma, had, in its reply to the Examination Report issued by the Trade Marks Registry, in relation to the ISTAMET XR CP mark, argued that its mark ISTAMET XR CP is not deceptively similar to the cited marks ASTAMET, INSTAMET and ESTIMET, and therefore, it cannot take a contrary stand before that court that the mark INDAMET is deceptively similar to ISTAMET XR CP. Glenmark further submitted that the marks are dissimilar and since the drugs bearing the rival marks are meant to treat different ailments and are also packaged differently, there is no possibility of confusion. Glenmark also submitted that Sun Pharma has failed to obtain a registration for the mark ISTAMET and the registration held by it is in respect of the ISTAMET XR CP mark. It also submitted that the term MET is common to trade.
Sun Pharma, on the other hand, argued that it could not be held bound by the stand taken by its predecessor and this cannot operate as estoppel against it. It further submitted that the word ISTAMET has to be viewed as constituting the dominant feature of the ISTAMET XR CP mark, with XR and CP being merely generic nomenclatures widely used in the pharmaceutical industry. It also argued that notwithstanding the well-recognized rule of ‘anti-dissection’, the dominant feature of a mark is one which can be legally taken into consideration while answering an issue relating to deceptive similarity. As such, it is clear that
the mark INDAMET is deceptively similar to the ISTAMET XR CP mark.
The court was of the opinion that the adoption and use of the INDAMET mark by Glenmark, despite its application being opposed by Sun Pharma, was a strategic gamble. The court also took in consideration the fact that Sun Pharma was first in the marketplace. Accordingly, the court held that although Sun Pharma’s registration was for the composite mark ISTAMET XR CP, the dominant feature is clearly the word ISTAMET. The court stated that the differences in ingredients or salts which make up competing pharmaceutical products would not be aspects which could be said to be germane when it come to the question of likelihood of confusion. The court, therefore, upheld the decision of the single judge bench and concluded that the rival marks are structurally and phonetically similar.
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