Delhi High Court restrains GLENMARK’S INDAMET in trademark infringement suit by Sun Pharma’s ISTAMET

Brief Facts:

The Delhi High Court recently decided a trade mark case in CS(COMM) 711/2022, where Sun Pharma Laboratories Ltd. (the Plaintiff) filed an infringement suit against Glenmark Pharmaceuticals Ltd. (the Defendant) over the latter’s use of the mark “INDAMET,” which Sun Pharma argued was deceptively similar to its own mark “ISTAMET.”

Plaintiff’s Contentions:

Sun Pharma, a global pharmaceutical giant, claimed that they had coined and adopted the trade mark “ISTAMET” in 2010 and had been using it in India since 2011 through exclusive licensing. They contended that the mark had acquired significant reputation and goodwill, with a sales turnover of approximately INR 252 crores in 2021-22. Sun Pharma argued that Glenmark’s “INDAMET” was phonetically, visually, and structurally similar to “ISTAMET,” leading to infringement under the Trade Marks Act, 1999, and causing confusion and deception among consumers.

Defendant’s Contentions:

Glenmark, another pharmaceutical heavyweight, contested the suit by emphasizing their distinct product nature, packaging, and usage. They argued that their “INDAMET” product, used for asthma treatment, was different from Sun Pharma’s diabetes medication, both in composition and mode of administration. Glenmark contended that the term ‘MET’ in “INDAMET” was derived from its constituent chemical compounds and was common to trade, thereby negating any claims of exclusive usage by the Plaintiff.

Court’s Analysis and Conclusion:

The Court highlighted that even minor differences in pharmaceuticals could have significant health impacts, thus requiring stringent scrutiny. The Court found that despite the different uses of the medications, the similarity in the marks “ISTAMET” and “INDAMET” could lead to confusion, especially among average consumers with imperfect recollection. Consequently, an injunction was granted in Sun Pharma’s favor, considering the balance of convenience, the established market presence of “ISTAMET,” and the paramount public interest in preventing health risks from confusion between the two drugs.

Legal Implications:

This judgment shows the high standard of care required in trade mark infringement cases, especially in the pharmaceutical sector. The decision reiterates the importance of consumer perception and public health considerations in determining the likelihood of confusion between trademarks.

Counsels:

For the Plaintiff: Mr. Sachin Gupta, Ms. Swati Meena, Mr. Yashi Agarwal, Mr. Rohit Pradhan

For the Defendant: Mr. CM Lall Sr. Advocate, Mr. Nitin Sharma, Mr. Kanishk Kumar, Mr. Deepika Pokharia, Mr. Naman Tandon, Mr. Ananya Chugh

Read Judgement