Division Bench confirms injunction against Glenmark from using INDAMET

Brief Facts:

Sun Pharma Laboratories found Glenmark’s mark INDAMET, an asthma drug, to be deceptively similar to its registered and prior used trade mark ISTAMET, a diabetes drug.

On 3^rd July, 2023, the Learned Single Judge of the Delhi High Court, Hon`ble Justice Sanjeev Narula, restrained Glenmark from manufacturing, selling, or advertising its drug under the mark INDAMET, or any other mark identical or deceptively similar to Sun Pharma Laboratories’ registered trade mark ISTAMET XR CP till the disposal of the case. Subsequently, Glenmark filed an appeal assailing said injunction order.

The Division Bench hearing the appeal, comprising of Hon`ble Justices Yashwant Varma and Dharmesh Sharma, vide its judgment dated 16^th April, 2024, has upheld the injunction order of July 2023 by the Learned Single Judge.

Court’s Analysis and Conclusion:

Glenmark had argued that its drug under the mark INDAMET was distinguishable from the drug sold by Sun Pharma under ISTAMET, since both were for treating different ailments, in completely different packaging, and were in different formulations and different administration methods, them being capsules for inhalation and tablets respectively. The Hon`ble Bench observed that it would be perilous to ignore that fact that the present issue of deceptive similarity calls for heightened scrutiny, as the competing drugs are meant to treat chronic ailments, ISTAMET for treating diabetes, and INDAMET for treating asthma. With regard to the aspect of formulations and administration, the Bench ruled in favour of Sun Pharma, that the different method of administration only affects the first time purchase, and does not discount the possibility of confusion thereafter.

The Hon`ble Bench noted that the Appellant Glenmark claims that the word “Met” is publici juris, and Sun Pharma cannot claim monopoly on such a word. The Bench rejected this submission, observing that Sun Pharma was not claiming exclusive rights over MET, and the dominant portions of the competing marks have rightly been compared, as those parts are the ones that a purchaser of average intelligence will recall.

The Bench was also faced with the issue of estoppel, wherein Glenmark has claimed that Sun Pharma cannot claim that the two competing marks are deceptively similar after it had claimed other such marks to be dissimilar in its reply to the examination report of the Registry. The Ld. Single Judge held that the question of deceptive similarity is essentially one which is legal in character, and consequently, principles of estoppel would have no application. The Hon`ble Division Bench, in furtherance of the Single Judge’s finding, lay emphasis the application moved by Sun Pharma to amend the reply to examination report, which modified its stand to say that the cited marks were indeed similar but were not being sold or available in market. This made the reply consistent with their stand in the present matter and hence no estoppel shall apply.

The Bench noted that Sun Pharma’s ISTAMET has been in the market since 2011, whereas Glenmark’s INDAMET came into the market only in June, 2022. The Bench also observed that even before the Defendant’s INDAMET came into the market, Sun Pharma, had already filed an opposition to the mark in May, 2022. The Bench agreed with the Ld. Single Judge’s view that Glenmark appeared to have consciously chosen to use the impugned mark despite the existing opposition and the said action is liable to be construed as either negligence or a strategic gamble, which does not situate the balance of convenience in Glenmark’s favour. Therefore, the Bench reaffirmed the Ld. Single Judge’s conclusion that the balance of convenience lies in favour of Sun Pharma.

Counsel for Appellant: Dr. Abhishek Manu Singhvi & Mr. Amit Sibal, Sr. Advs. with Mr. Sidharth Chopra, Mr. Nitin Sharma, Mr. Kanishk Kumar, Ms Deepika Pokharia, Mr. Naman Tandon, Mr. Diwakar Chaturvedi, Mr. Nidhi Ram, Mr. Rishabh Sharma, Mr. Shaksham Dhingra & Mr. Mahesh Mahadgut, Advs

Counsel for Respondent: Mr. Mukul Rohatgi & Mr. Jayant Mehta, Sr. Advs. with Mr. Sachin Gupta, Mr. Sameer Rohatgi, Ms. Ayushi Kumar, Ms. Gaurangi Sharma, Mr. Rohit Pradhan, Mr. Kartikey Singh, Mr. Raghav Dutt & Mr. Ajay Kumar, Advs.

For detailed reading of what was held by the Ld. Single Judge click here.