Glenmark Pharmaceuticals Ltd. v. Sun Pharma Laboratories

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.