Delhi High Court
Glaxo Group Ltd. & Anr. vs S.D. Garg & Ors. on 12 May, 2015
Author: Najmi Waziri
$~R-3
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 12.05.2015
+ CS(OS) 12/2006
GLAXO GROUP LTD. & ANR. ..... Plaintiffs
Through: Mr. Manav Kumar, Adv.
versus
S.D. GARG & ORS. ..... Defendants
Through: Mr. Inder Deep Singh, Adv.
CORAM:
HON'BLE MR. JUSTICE NAJMI WAZIRI
NAJMI WAZIRI, J.
1. This suit seeks permanent injunction against infringement of the
trademarks 'ZANTAC' and 'ZINETAC' and their passing-off by
the defendants. Plaintiff No.1 is a company incorporated under
the laws of the United Kingdom while plaintiff No.2 was
incorporated in India in 1924 under the name of H.J. Foster & Co.
It became a wholly owned subsidiary of Joseph Nathan & Co. in
1926. In October 2001, plaintiff No.2 was renamed as
GlaxoSmithKline Pharmaceuticals Ltd, following the merger with
SmithKline Beecham Pharmaceuticals (India) with Glaxo India
Limited.
2. Plaintiff No.1 is the owner of the trademarks 'ZINETAC' and
'ZANTAC', which were registered in the year 1985 and 1981
respectively. The trademarks are associated with medicinal
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preparation, and it contains 'Ranitidine Hydrochloride' which is
used in the treatment of gastric ailments. It is stated that
'ZANTAC' is administered in the form of tablets, suspension and
injection. It is the case of the plaintiffs that these two trademarks
have been used in India consistently and extensively to the extent
that a common man might associate these names for the treatment
of gastric ailments, akin to how one would associate popular
branded Paracetamol tablets for the treatment of fever. It is stated
that the plaintiffs' pharmaceutical products bearing the marks
'ZINETAC' is extensively sold in India; whereas the medicinal
products bearing the trademark 'ZANTAC' is available in many
parts of the world. As a result of their extensive recognition and
goodwill, the two trademarks have come to be associated
exclusively with the medicinal products manufactured and traded
by the plaintiffs. It is further submitted that the defendants'
action of reproduction of the plaintiffs' medicinal products under
a deceptively similar mark 'GENTAC' amounts to infringement
of their registered trademarks and also to passing-off.
3. Mr. Manav Kumar, the learned counsel for the plaintiffs submits
that while the plaintiffs medicinal product are predominantly sold
in the form of tablets as opposed to the defendants' selling their
medicinal product in the form of injection vials, the method of
administration of the medicines would not affect the plaintiffs'
suit against infringement. The learned counsel further submits that
in a suit for infringement what requires determination is, whether
the infringing products are likely to create confusion in the mind
of a purchaser. In support of this contention, the learned counsel
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relies upon Cadila Health Care Limited v. Cadila
Pharmaceuticals Limited1and Novartis AG v. Crest Pharma Pvt.
Ltd & Anr 2. The learned counsel submits that 'ZANTAC' is an
invented word having no specific dictionary meaning thereby
containing a high degree of distinctiveness. In such
circumstances, the defendants' action to use the mark 'GENTAC'
would amount to passing off and infringement of the plaintiffs'
trademarks. Apart from the packaging of GENTAC being similar
to that of the plaintiffs' medicinal products, the learned counsel
submits that 'GENTAC' is phonetically similar to that of the
plaintiffs' medicinal products. There is hardly a discernible
difference between the two classes of medicinal products.The
difference between ZANTAC and GENTAC is rather difficult to
be differentiated by a man with average intelligence. Furthermore,
keeping in view of the literacy rate of the population in the
country, it is likely that a purchaser would buy GENTAC instead
of the plaintiff's products.In support of this contention, the
learned counsel relies on K. Krishna Chettiar v.Ambal & Co. 3
which held:
" 9. The vital question in issue is whether, if the appellant‟s
mark is used in a normal and fair manner in connection
with the snuff and if similarly fair and normaluser is
assumed of the existing registered marks will there be such
a likelihood of deception that the mark ought not to be
allowed to be registered?(seein the matter of Broadhead‟s
1 AIR 2001SC 1952
2 2009(41) PTC 57(del)
3 AIR 1970 SC 146
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Application for registration of a trade mark, 1950-67 RPC
209). It is for the Court to decide the question on a
comparison of the competing marks as a whole and their
distinctive and essential features. We have no doubt in our
mind that if the proposed mark is used in an normal and
fair manner the mark would come to be known by its
distinguishing feature "Andal". There is a striking
similarity and affinity of sound between the words "
Andal" and " Ambal". Giving due weight to the judgment
of the Registrar and bearing in mind the conclusions of the
learned Single Judge and the Divisional Bench, we are
satisfied that there is a real danger of confusion between
the two marks.
10. There is no evidence of actual confusion, but that might
be due to the fact that the appellant‟s trade is not of long
standing. There is no visual resemblance between the two
marks, but ocular comparison is not always the decisive
test. The resemblance between the two marks must be
considered with reference to the ear as well as the eye.
There is a close affinity of sound between Ambal and
Andal.
11. In the case of Coca-Cola Co. of Canada v. Pepsi Cola
Co. of Canada Ltd., 1942-59 RPC 127, it was found that
cola was in common use in Canada for naming the
beverages. The distinguishing feature of the mark cocacola
was coca and not cola. For the same reason the
distinguishing feature of the mark Pepsi Cola was Pepsi
and cola. It was not likely that any one would confuse the
word Pepsi with coca. In the present case the word "Sri"
may be regarded as in common use. The distinguishing
feature of the respondent‟s mark is Ambal while that of the
appellant‟s mark is Andal. The two words are deceptively
similar."
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4. The learned counsel further submits that since both parties are
involved in the manufacture and trade of identical products, it is
possible that the buyers would confuse the defendants' product to
be that of the plaintiffs'. It is submitted that the past actions of the
defendant reflect their intention to infringe the plaintiffs'
registered trademarks. It is stated that the plaintiffs had initiated a
suit for infringement of trademarks and copyrights, being suit No.
326 of 2004, against the defendant when the latter started to
manufacture a medicine under the trade name 'BECNATE' with a
packaging similar to that of the plaintiffs' product '
BETNOVATE'. However, by order dated 06.04.2005, this Court
restrained the defendants from manufacturing or dealing in
products that were similar to the product of the plaintiffs.
5. Mr. Inder Deep Singh, the learned counsel for the defendants
submits that the trademark 'ZANTAC' is not associated with any
medicinal product and that the trademark is a dummy registration.
Furthermore, the plaintiffs have failed to lead evidence apropos
'ZINETAC'. Under such circumstances, the plaintiffs cannot
claim any protection of their trademarks. It is submitted that
while 'GENTAC' has commercial goodwill, the plaintiffs have
failed to show the existence of the same for their products. It is
submitted that there can be no possible cause for confusion
between the two classes of the medicines as the defendants'
product is exclusively sold in the form of injections as opposed
the plaintiffs' products being sold in the form of tablets. In
addition, the two classes of medicines being 'H' scheduled drugs;
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a buyer cannot procure the medicines without producing a
medical prescription to the chemist. Accordingly, it is submitted,
that there is no possibility of any confusion being created in the
mind of the buyer.
6. The learned counsel further contends that the plaintiffs cannot
claim an infringement of a trademark when they have failed to
prove that the said registration subsists; that the plaintiffs have not
produced any document to show that they have applied for
renewal of the registration of trademarks and that non-use of a
trademark for a long period of time would bar the applicant from
such seeking registration or renewal thereof. It is submitted that
the object of a registered trademark is to enable proprietorship
over the same when it is put to use and not to monopolize the
trademark indefinitely. On this point, the learned counsel relies
upon Veerumal Praveen Kumar v. Needle Industries (India) Ltd.
and Anr. 4 wherein this Court held:
" 33. On appreciation of the facts of the case we are unable
to agree with the conclusion of the learned Single Judge
that the adoption of the trademark „555‟ is dishonest. Delay
simplicitor may not be a defence in a suit for infringement
of trademark but where a trader allows a rival trader to
expend money over a considerable period in building up a
business with the aid of a mark similar to his own he will
not be allowed to stop his rivals‟ business. If he were
permitted to do so great loss would be caused not only to
the rival trader but to those who depend on his business for
4 93(2001) DLT 600(DB)
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their livelihood. (Reference to Law of trade Marks and
Passing Off by P. Narayanan, 5th Edition, page 444)
34. It may,however, be pointed out that there cannot be any
hard and fast rule in determining the cut-off point when
non-use of the registered mark would disentitle the trader
to any protection. It would depend upon the facts and
circumstances of each case."
7. The learned counsel for the defendants submits that GENTAC has
been approved by the Drug Licensing Authority to be sold to the
public. Accordingly, once the approval of the Drug Licensing
Authority is obtained, the plaintiffs cannot restrain the defendants
from manufacturing the injections.In such circumstances, the
plaintiffs have failed to make out a case for infringement and
passing off and the suit ought to be dismissed.
8. The Court, while adjudicating a suit for infringement of
trademark, is required to consider the trademark in its entirety.
The primary claim of the plaintiffs is that the defendants'
medicinal product 'GENTAC' is deceptively similar to the
plaintiffs' medicinal products ' ZANTAC' and 'ZINETAC' in
terms of the packaging, trade style and the phonetic similarity.
Under such circumstance, the plaintiffs are required to show that
the defendants' products are deceptively similar to the plaintiffs'
registered medicinal products. In pursuance of establishing the
similarity between the two classes of medicinal products,
ZANTAC, ZINETAC marked as Ex Pw1/ 5 and GENTAC
marked as Ex Pw 1/8 respectively are placed on record. On a
perusal of the exhibits, this Court finds that, insofar as similarity
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of the trade style is concerned, the two classes of the medicinal
products contain different packaging and trade style. On this facet
alone, this Court is of the view that the two categories of
medicinal products are visually distinct. However, this Court is
concerned with the phonetic similarities between the two classes
of medicines. It is to be noted that the product in question is to be
assessed in its entirety and not based on one of the characters
alone. The need to distinguish between the products is greater
when the trademark in question pertains to medicinal products
preparations. In Cadila (supra) the Supreme Court has laid down
the considerations the Court would have to bear when the
products in question relate to pharmaceutical products. The
Supreme Court observed:
" 32. Public interest would support lesser degree of proof
showing confusing similarity in the case of trade mark in
respect of medicinal product as against non-medicinal
products. drugs are poisons, not sweets. Confusion between
medicinal products may, therefore, be life threatening, not
merely inconvenient. Nothing (sic) the frailty of human
nature and the pressures placed by society on doctors,
there should be as many clear indicators as possible to
distinguish two medicinal products from each other. It is
not uncommon that in hospitals, drugs can be requested
verbally and/or under critical pressure situations. Many
patients may be elderly, infirm or illiterate. They may not
be in position to differentiate between the medicine
prescribed and bought which is ultimately handed over to
them. This view finds support from McCarthy on Trade
Marks. 3rd Edition para 23.12. of which reads as under:
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"The tests of confusing similarity are modified when
the goods involved are medicinal products.
Confusion of source or product between medicinal
products may produce physically harmful results to
purchaser and greater protection is required than in
the ordinary case. If the good involved are medicinal
products each with different effects and designed for
even subtly different uses, confusion among the
products caused by similar marks could have
disastrous effects. For these reasons, it is proper to
require a lesser quantum of proof of confusing
similarity for drugs and medicinal preparations. The
same standards has(sic) been applied to medical
products such as surgical sutures and clavicle
splints."
9. In the present suit, both the plaintiffs' medicinal product
'ZANTAC' and 'ZINETAC'and the defendants' 'GENTAC'
contain Ranitidine Hydrochloride, which is used in the treatment
of gastric ailments. From the exhibits, it is apparent that
GENTAC is manufactured and sold in the form of injection vials
while the plaintiffs' ZANTAC and ZINETAC are sold in the form
of tablets they are Schedule H drugs. The Court notes that the
two classes of medicinal products are Schedule 'H' drugs. The
Court is unpersuaded by the contention of the defendants that
since the medicinal products can be procured only through valid
prescription, there wasn't any likelihood of confusion in the mind
of the buyer. While there may be certain amount of assurance to
the purchaser of medicines against prescriptions but it does not
obviate or negate the likelihood of confusion by an illiterate
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person or one under stress, given the very high degree of phonetic
similarity between the two competitive names for the same cure.
The degree of caution in medicinal and surgical products in
greater so as to avoid causing any harm to the unsuspecting
consumer. Phonetic similarity is vital in the adjudication of a suit
for infringement of trademark apropos medicinal products. The
Supreme Court in Cadila observed:
" 33.[...] A stricter approach should be adopted while
applying the test to judge the possibility of confusion of one
medicinal product for another by the consumer. While
confusion in the case of non- medicinal products may only
cause economic loss to the Plaintiff, confusion between two
medicinal products may have disastrous effects on health
and in some cases life itself. Stringent measures should be
adopted specially where medicines are the medicines of last
resort as any confusion in such medicines may be fatal or
could have disastrous effects. The confusion as to the
identity of the product itself could have dire effects on the
public health."
It is important to note that the English language is not the
primary language to many in this country. There is a very large
percentage of population who are unaware of the English nuances
of the language. The rural population, who are yet to acquire
fluency in the language, may be confused by the phonetic
similarity between the two classes of the medicinal products.
Though the medicines are used in the treatment of the same
ailment, it does not negate the possibility of side effects from the
medicines. It is established that that ZANTAC and ZINETAC are
registered trademarks of the plaintiffs. The argument of the
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defendants that ZANTAC is not associated with any medicinal
preparation and that the same is only a dummy registration of the
plaintiffs does not hold merit in the light of the fact that the
plaintiffs have placed on record a sample of Ranitidine
Hydrochloride tablets bearing the trademark 'ZANTAC'.
Furthermore, the plaintiffs have produced the registration
certificates of each of the medicinal products thereby showing
that their marks have been duly registered.
10.In light of the abovementioned reasons, this Court is of the view
that the plaintiffs have made out a case of infringement and
passing off by the defendants. The plaintiff is entitled to the
protection of their trademark and for grant for decree as prayed
for. In the circumstances, the suit is decreed in terms of
paragraph No. 25 (i), (ii) and (iii) of the plaint. Let the decree
sheet be drawn up accordingly.
11.The suit is disposed off in the above terms.
MAY 12, 2015 NAJMI WAZIRI, J.
d
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