Sun Pharma Laboratories Ltd vs Ajanta Pharma Ltd
2019 Latest Caselaw 2460 Del

$~
*    IN THE HIGH COURT OF DELHI AT NEW DELHI
                                     Reserved on: 29th March, 2019
                                    Date of decision: 10th May, 2019
+                CS (COMM) 622/2018 & I.A. 12663/2014
     SUN PHARMA LABORATORIES LTD                        ..... Plaintiff
                      Through: Mr. Kapil Wadhwa, Ms. Devyati
                               Nath and Ms. Deepika Pokharia,
                               Advocates (M: 9891929028).
                      versus
     AJANTA PHARMA LTD                               ..... Defendant
                      Through: Mr Sandeep Sethi, Senior Advocate,
                               Mr. Jayant Mehta, Mr. Afzal B. Khan
                               and Ms. Suhrita Majundar, Advocates
                               (M: 9881880037).
     CORAM:
      JUSTICE PRATHIBA M. SINGH
                      JUDGMENT

Prathiba M. Singh, J.

1. Is the test for infringement and passing off for nutraceutical products the same as the test applicable for pharmaceuticals?

2. The dispute between the Plaintiff and the Defendant in the present case is in respect of two products used by patients of age related dimness of vision and diabetic retinopathy. They are sold under the trademarks 'GLOEYE‟ and 'GLOTAB‟. Both are ocular medicines. Since they contain plant extracts, they are termed as 'nutraceuticals' under Section 22 of the Food Safety and Standards Act, 2006 (hereinafter „FSS Act, 2006‟) and are governed by the Food Safety and Standards (Licensing and Registration of Food Businesses) Regulations, 2011 (hereinafter „FSS Regulations, 2011‟) and the Food Safety and Standards (Health Supplements, Nutraceuticals, Food for Special Dietary Use, Food for Special Medical Purpose, Functional

Food and Novel Food) Regulations, 2016 (hereinafter, 'FSS Regulations, 2016‟).

3. The case of the Plaintiff is that it commenced use of the mark 'GLOEYE‟ in July, 2005. The mark 'GLOEYE‟ was registered in class 5 since 25th July, 2005. The annual sales of the Plaintiff under this mark are around Rs.11 crores as of 2012-13 and the annual promotional expenses is approximately Rs.244 lakhs for the said year. The Plaintiff's product is an anti-oxidant tablet which is taken for age related dimness of vision and diabetic retinopathy. The Defendant - Ajanta Pharma Limited uses the mark 'GLOTAB‟ also for age related dimness of vision and diabetic retinopathy. The Defendant applied for the mark on 23rd July, 2008 on a proposed to be used basis and the mark was registered on 14 th January, 2011. Thus, both the trademarks are registered, and the present suit would proceed as a passing off action. The use by the Defendant is since 2013. The Plaintiff filed the present suit in 2014 and sought an interim injunction. The parties explored mediation, which however failed. The Plaintiff, sought amendment in the suit to add averments that the Defendant's packaging is similar to that of the Plaintiff. In respect of the said amendment, the following order was passed on 23rd July, 2018:

"I.A. 23480/2014 (under Order VI Rule 17 CPC) This is an application seeking amendment of the plaint to add averments to the effect that the Defendant‟s packaging is similar to that of the Plaintiff.

Initially, the suit was a suit for infringement and passing off in respect of the trademark GLOEYE of the Plaintiff, being similar with the trademark GLOTAB of the Defendant. It is noticed that GLOEYE is a health supplement whereas GLOTAB is a prescription

medicine in respect of a specific formulations. The initial suit being in respect of trademark infringement and passing off, any submissions in respect of the trade-dress would be included in the relief of passing off for being argued at the final stage. The amendments being sought are therefore not liable to be allowed, as the scope of the suit cannot be expanded. I.A. is disposed of with these observations."

4. Both parties have filed cancellation petitions, seeking cancellation of each other's marks. Submissions have been heard on the application seeking interim injunction. The submission of Ld. Counsel for the Plaintiff is that the Plaintiff is the clear prior user of the mark by at least 8 years. „GLOEYE‟ is the only anti-oxidant eye product with the prefix 'GLO‟. It is submitted that the manufacturing license of the Plaintiff was granted in August, 2005. Both the products are nutraceuticals, but they do not have an identical composition. Mr. Kapil Wadhwa, Ld. Counsel submits that the fact that the composition is different enhances the chances of confusion, especially in products that are consumed for the same ailments. A perusal of the sales of the Defendant shows that they are minuscule and the manufacturing license of the Defendant is of February, 2013 while the Defendant's sales are from July, 2013. A perusal of the certificate by IQVIA, which is a market survey company shows that the total value of the „GLOEYE‟ brand since launch is approximately Rs.19.26 crores and that of 'GLOTAB‟ is Rs.2.74 crores. Since both the products are nutritional supplements and 'GLO‟ is the main prefix, chances of deception and confusion are extremely high. It is further submitted that in the case of products which are used to treat any ailment, even if they are not pharmaceuticals, the test laid down in Cadila Health

Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 ought to be applied, as both are medicinal by their very nature. The difference in the two products is highlighted. Whereas the dosage for the Plaintiff's product is one tablet for an adult per day, the Defendant's product's dosage is 1 to 2 tablets per day. The Plaintiff's product can be used to treat allergies, while the Defendant's product cannot. Both the products are used by patients post cataract surgeries and hence though they are nutraceuticals, they should be protected just like drugs. Since the Defendant was well aware of the Plaintiff's well-known product „GLOEYE‟, benefit of doubt ought not to be given to the Defendant. The Defendant's mark was registered as the advertisement of the mark in the Trademark Journal skipped the Plaintiff's attention.

5. On the other hand, it is submitted by Mr. Jayant Mehta, Ld. Counsel appearing for the Defendant that 'GLOTAB‟ is a registered trademark of the Defendant and since there has been no injunction in this suit since inception, no interim injunction ought to be granted. He further submitted that a third party by the name Pharmaceutical Coatings Pvt. Ltd had applied for registration of the mark 'GLOTAB‟ and had registered the same prior to the Plaintiff. Since the application for registration of 'GLOTAB‟ by the said third party did not inhibit the use and registration of the Plaintiff's „GLOEYE‟, the same shows that there are no chances of deception or confusion. Even the Trademark authorities do not consider 'GLOTAB‟ or „GLOEYE‟ to be similar. He further submits that both products are prescription drugs, though they are nutraceutical products and that the prefix 'GLO‟ is common to the trade. It is submitted that the marks „GLOEYE‟ and 'GLOTAB‟ ought to be compared as a whole and dissection of the two is

impermissible. There has not been even one instance of confusion in the last four to five years of the Defendant's product being in the market and thus, there is no likelihood of confusion. It is submitted that the prefix 'GLO‟ is derived from 'haemoglobin'. He relies on the following judgments:

(i). Shreya Life Sciences Pvt. Ltd, v Magna Biochem Pvt Ltd., I.A. 1962/2005 in CS(OS) 328/2005 (Decided on 3rd March, 2008)

(ii) Sun Pharma Laboratories Ltd. v Mylan Laboratories CS (OS) 1098/2016 (Decided on 7th February, 2017)

(iii) East African (I) Remedies Pvt. Ltd. v Wallace Pharmaceuticals Ltd. I.A. 6298/2001 in Suit No. 1420/2001, Decided on 1st April, 2003

(iv) Sami Khatib and Ors. v Seagull Labs I.A. 2716/97 in Suit No. 603/997, Decided on 10th August, 2001

(v) Astrazeneca UK Limited and Ors. v Orchid Chemicals and Pharmaceuticals Ltd., FAO (OS) 445-446/2006, Decided on 15th February,

(vi) F. Hoffman-la Roche & Co. Ltd. v Geoffrey Manner & Co., Civil Appeal No. 1330/1966, Decided on 8th September, 1969

(vii) Schering Corporation and Ors. v Alkem Laboratories, FAO (OS) 313/2008 (Decided on 1st December, 2009)

(viii) Novartis A.G. v Wanbury Ltd. and Ors., I.A. 3609/2005 in CS(OS) 607/2005 (Decided on 4th July, 2005)

6. Mr. Sandeep Sethi, Ld. Senior counsel appearing for the Defendant submits that the cases where injunction had been granted for common prefixes, like the case of LIV-52 in Himalaya Drug Company v S.B.L.

Limited 2013 (53) PTC 1 (Del.) (DB) are post-trial decisions. Since there has been no confusion for the last 6 years, this is not a case for grant of interim injunction. By 2013, the Plaintiff's mark did not have goodwill or reputation and hence the ingredients of a passing off action are not made out.

Findings

7. The first and foremost fact is that since both parties are registered trademark holders, no case for infringement can be considered or is maintainable. The interim injunction is to be adjudicated on the principles of passing off, as recognized under Section 27(2) of the Trade Marks Act,1999, which reads as under:

"27 (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof."

8. Though, initially, the Defendant's product was approved as a pharmaceutical product, there is no doubt that as on date, both parties' products are nutraceuticals. A nutraceutical, under Section 22 of the FSS Act, 2006 is defined as under:

"22(1) "foods for special dietary uses or functional foods or nutraceuticals or health supplements" means:

(a) foods which are specially processed or formulated to satisfy particular dietary requirements which exist because of a particular physical or physiological condition or specific diseases and disorders and which are presented as such, wherein the composition of these foodstuffs must differ significantly from the composition of ordinary foods of comparable nature, if such ordinary foods exist, and may contain one or

more of the following ingredients, namely:-

(i) plants or botanicals or their parts in the form of powder, concentrate or extract in water, ethyl alcohol or hydro alcoholic extract, single or in combination;

(ii) minerals or vitamins or proteins or metals or their compounds or amino acids (in amounts not exceeding the Recommended Daily Allowance for Indians) or enzymes (within permissible limits);

(iii) substances from animal origin;

(iv) a dietary substance for use by human beings to supplement the diet by increasing the total dietary intake;

(b) (i) a product that is labelled as a "Food for special dietary uses or functional foods or nutraceuticals or health supplements or similar such foods" which is not represented for use as a conventional food and whereby such products may be formulated in the form of powders, granules, tablets, capsules, liquids, jelly and other dosage forms but not parenterals, and are meant for oral administration;

(ii) such product does not include a drug as defined in clause (b) and ayurvedic, sidha and unani drugs as defined in clauses (a) and (h) of section 3 of the Drugs and Cosmetics Act, 1940 (23 of 1940) and rules made thereunder;

(iii) does not claim to cure or mitigate any specific disease, disorder or condition (except for certain health benefit or such promotion claims) as may be permitted by the regulations made under this Act; (iv) does not include a narcotic drug or a psychotropic substance as defined in the Schedule of the Narcotic Drugs and Psychotropic Substances Act, 1985 (61 of 1985) and rules made thereunder and substances listed in Schedules E and EI of the Drugs and Cosmetics Rules, 1945"

9. The Plaintiff's product contains bilberry extract, which is included in

Schedule VI of the FSS Regulations, 2016. The Defendant's products under the mark 'GLOTAB‟ also contain ingredients which are included in Schedule VI. Both parties have obtained FSSAI license numbers. Nutraceutical products are highly regulated products under the FSS Act. A specific license has to be obtained from the authorities concerned in order for manufacture and sale of nutraceuticals. Any products which contain the ingredients mentioned in the Schedule to the FSS Regulation, 2016 would require to be approved by the authorities. The claims that can be made on these products including the packaging, labelling, etc. are fully regulated. The products may be sold in various forms, including granules, powder, tablets, capsules, liquid, gels and other formats. They could contain any of the ingredients mentioned in Schedules II, IV, VI, VII or VIII of the FSS Regulations, 2016. Even if a particular nutraceutical's safety is established in India or any other country, it would still require to be approved by the Food Authority constituted under the FSS Act. As a matter of practice, nutraceuticals could also be prescribed by doctors, but not all of them require prescriptions in order to be purchased.

10. The manner of approval of nutraceuticals and nutritional food supplements under the FSSAI regime shows that these are highly regulated products and cannot be manufactured without a license. The product itself, the packaging, the labels, the content of the labels, specific disclaimers and conditions have all to be approved by the Food Authority. They are also, by their definition itself, used in respect of specific physical conditions, physiological conditions, diseases or disorders. They are consumed usually on the advice of medical practitioners. However, some of them do not require prescriptions. These factors clearly show that nutritional food

supplements and nutraceuticals are akin to medicines and pharmaceutical preparations. It is the well settled legal position in respect of medicines and pharmaceuticals that deception and confusion need to be avoided. In the celebrated judgment of the Supreme Court in Cadila it was held as under:

"25. The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendants drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiffs medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems. In this regard, reference may usefully be made to the case of Glenwood Laboratories, Inc. Vs. American Home Products Corp., where it was held as under:

"The products of the parties are medicinal and the applicant‟s product is contraindicated for the disease for which opposer‟s product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals."

26. It was further submitted on behalf of the appellant that although the possibility of confusion in a drug being sold across the counter may be higher, the fact that a drug is sold under prescription or only to physicians cannot by itself be considered a sufficient protection against confusion. The physicians and pharmacists are trained people yet they are not

infallible and in medicines, there can be no provisions for mistake since even a possibility of mistake may prove to be fatal.

27. As far as present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measurers to prevent any confusion arising from similarity of marks among medicines are required to be taken. ....

29. In the book titled as McCarthy on Trade Marks, it is observed in the footnote at pp.23-70 as under:

"Physicians and Pharmacists are knowledgeable in their fields does not mean they are equally knowledgeable as to marks and immune from mistaking one mark from another."

....

31. Trade mark is essentially adopted to advertise one‟s product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing-off action, the plaintiff‟s right is "against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one

person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit."

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 other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting 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 a 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:

"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 purchasers and greater protection is required than in the ordinary case. If the goods 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 standard

has been applied to medical products such as surgical sutures and clavicle splints."

11. The tests laid down in Cadila can be paraphrased as under:

i) In the case of drugs, a strict test needs to be applied for determining confusion and deception;

ii) If the products have a difference in composition with completely different side effects, a stricter test should be applied;

iii) Greater vigilance is required where the products are meant to cure the same ailments, but the compositions are different;

iv) Merely because drugs are sold under prescription is not sufficient protection against confusion;

v) The prevalent social conditions and linguistic barriers require stricter measures to be taken, to prevent confusion arising from similarity of marks among medicinal products;

vi) Physicians and pharmacists are not immune to mistakes;

vii) A lesser degree of proof to establish confusing similarity would be required in the case of medicinal products as against non- medicinal products;

viii) The varying profiles of patients, especially the elderly, illiterate persons and children need to be kept in mind;

ix) In view of public health issues involved in the case of medicines, stringent measures ought to be adopted.

12. Mr. Mehta has urged before this Court that the above tests laid down in Cadila may not be fully applicable in the context of nutritional food

supplements and nutraceuticals and some degree of confusion can be tolerated. However, this Court is of the opinion that the mere fact that these products are nutritional food supplements or nutraceuticals and are not pharmaceuticals in the strict sense is not convincing enough for adoption of a less stringent test. Pharmaceuticals and nutraceuticals are used in respect of diseases and disorders. They are both meant to address specific ailments.

Both these products are meant to improve the health of patients. The mere fact that nutraceuticals are termed so, as they contain ingredients derived from plants, does not mean that a lenient test needs to be adopted in respect of these products. The effects of the products and the consumers of the products all being similar in nature, the test applicable to pharmaceutical products would be applicable even to nutraceuticals. This Court accordingly rejects the contention of the Defendant that the judgment in Cadila would not be applicable to the present case.

13. Ld. Senior Counsel Mr Sethi, for the Defendant has also attempted to submit before this Court that in the case of Cadila, the Supreme Court did not grant an interim injunction. The fact that the Supreme Court in the facts of the Cadila case did not grant an injunction, does not lead one to the conclusion that the test in Cadila ought not to be applied in subsequent cases to determine deception and confusion.

14. In fact, in Wyeth Holdings Corporation & Anr. v. Burnet Pharmaceuticals (Pvt.) Ltd. (2008) 2 AIR Bom R 778, a Ld. Single Judge of the Bombay High Court has held that an artificial distinction cannot be created between different classes of medicinal preparations. The observations of the Court are relevant and are set out herein below:

"14A. As a matter of principle, it would be

inappropriate for the Court to apply a stricter standard only to a particular class of medicinal preparations. If the Court were to do this, it would have to make artificial distinctions from case to case based on whether or not the Court considers that a confusion arising out of the medicinal product in issue may or may not have disastrous effects on health and life. Such an approach is impermissible. An ostensibly innocuous medicinal preparation taken for an affliction which is not life threatening may yet result in a serious danger to life and health, where the drug is not manufactured under correct conditions. A consumer who desires to obtain a medicine even for an ordinary ailment is entitled to be sure that the drug that he purchases is of an assured character and quality. A manufacturer builds up a reputation for quality and standards assiduously over a length of time and an established mark assures to the consumer that the medicine which he has purchased is of a requisite quality that is associated with the mark. A less than strict standard cannot be applied on the hypothesis that the ailment which the drug is intended to treat is not life threatening, nor for that matter can the application of a lower standard be justified merely on the ground that the composition of the Plaintiff's product is the same as that of the Defendant and the confusion caused by mistaking one for the other would not result in a danger to health. Undoubtedly, where the competing drugs are meant to cure the same ailment but the compositions are different, mistaking one for the other may result in deleterious consequences. But, merely because the two competing marks are used for drugs with the same composition that would not justify applying a lower standard of scrutiny. For, even in such a case, the public interest lies in protecting the consumer against an unwary purchase of a deceptively similar product. The consumer must be protected against a reasonable possibility of confusion arising

out of a deceptively similar mark. The attempt, therefore, to read down Cadila is impermissible."

Thus, it is held that the principles laid down in Cadila in respect of medicines and pharmaceuticals, would equally apply to products which are nutraceuticals and nutritional supplements.

15. Coming to the facts of the present case, the Plaintiff is the prior user by several years. The two trademarks are 'GLOEYE‟ and 'GLOTAB‟, and the compositions of these two products are as under:

             GLOEYE                       GLOTAB
             Bilberry extract 80mg + Astaxanthin           2mg     +
             Pycnogenol 25 mg             Bilberry extract 5mg +
                                          Gingko biloba 40 mg +
                                          Lutein     10     mg     +
                                          Rutoside trihydrate 25
                                          mg + Zeaxanthin 2 mg

16. A perusal of the above shows that, though both products contain bilberry extracts and are nutritional supplements, their composition is not identical. The manner in which they have to be consumed is also not identical. The uses of these two products are not identical. While 'GLOEYE‟ can be used for allergy, 'GLOTAB‟ is not used for allergy specifically. The side effects of these two products are also not identical. In fact, in the case of 'GLOTAB‟, it is specifically not to be taken in case of allergic reactions and allergies. The daily intake of these products is also different. Thus, while

both products are used for similar medical conditions and are anti-oxidant retinopathy drugs, there are marked differences between the two products.

17. The explanation given by the Defendant that 'GLO‟ is taken from haemoglobin is not convincing, as a perusal of the literature in respect of the two drugs does not show any direct connection with haemoglobin. This explanation clearly appears to be an afterthought. When the Defendant applied for the mark 'GLOTAB‟, the Plaintiff's mark was already registered. The Plaintiff's product was also in the market and as of 2013, had an annual sales turnover of more than Rs.11 crores. As the two products are used for treating similar medical conditions, it is not possible to accept the explanation of the Defendant that it was a bona fide adopter of the mark 'GLOTAB‟. Moreover, the following are the factors which persuade this Court to hold that the mark 'GLOEYE‟ is deceptively similar to 'GLOTAB‟:

a) 'GLOTAB‟ and 'GLOEYE‟ have the same prominent prefix, namely, 'GLO‟;

b) The Plaintiff's product 'GLOEYE‟ is a tablet. 'TAB' is nothing but a short form for 'tablet';

c) The composition of these two products is different though both are ocular medicines.

d) The suffixes 'EYE' and 'TAB' in fact do not sufficiently distinguish the two products - and in fact enhance the chances of confusion;

e) Both are nutritional food supplements. Both contain bilberry extract, but the remaining ingredients are different;

f) The chances of 'GLOTAB‟ being prescribed in place of 'GLOEYE‟ or a patient being dispensed with 'GLOTAB‟ in place of 'GLOEYE‟ is quite high and cannot be eliminated.

18. Enormous emphasis has been placed by the Defendant on the fact that no specific instance of confusion has been pointed out. Firstly, in a passing off action, the test is of likelihood of confusion and not actual confusion. The suit is yet to go to trial. At the interim stage, the Court has to adjudge the chances of confusion. In Laxmikant Patel v Chetanbhat Shah and Anr. (2002) (24) PTC 1 (SC), the Supreme Court has clearly held that in a passing off only `probability of confusion' needs to be considered:

"8. It is common in the trade and business for a trader or a businessman to adopt a name and/or mark under which he would carry on his trade or business. According to Kerly (Law of Trade Marks and Trade Names, Twelfth Edition, para 16.49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the courts will protect. An action for passing-off will then lie wherever the defendant company's name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name

innocently.

...

10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that he goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."

19. In Novartis AG v Crest Pharma Pvt. Ltd. and Ors., I.A. No. 5495/2008 in CS(OS) 851/2008, Decided on 24th July, 2009, a ld. single judge of this Court held as under:

"23. The other argument of the counsel for the defendant that the plaintiff's product is available in tablets and oral suspension form and the defendant's product is available in injection form has also no force as it has been seen from experience of the pharmaceuticals products available in all over the world that most of

the companies are making pharmaceuticals products in both the forms i.e. tablets as well as in injection form under the same trade mark. As per well settled law, the actual confusion and deception is not required in order to prove the case of passing off even if the defendant has adopted the mark innocently and the court comes to the conclusion that the two trade marks are deceptively similar, injunction under the said circumstances has to be granted. Actual deception is not required in an action of passing off. Century Traders v. Roshan Lal Duggar & Co. 1978 (Del) 250. Therefore there is no chance of confusion and deception."

20. Thus, the settled law in passing off is that of probability or likelihood of confusion and not actual confusion. In Cadila, the Supreme Court has warned that in case of products used for the same ailments but with different composition, a more stringent test needs to be adopted.

21. The Defendant has vehemently contended that 'GLO‟ is common to the trade. To support this submission, the Defendant has relied upon various trademark applications/registrations with the prefix 'GLO‟. The list handed out by the Defendant itself in fact proves the opposite. In the category of anti-oxidant ophthalmic drugs, there are only two products with prefix 'GLO‟ i.e. 'GLOEYE‟ and 'GLOTAB‟. The Defendant has not brought on record any other product with the prefix 'GLO‟ in this category of products. The physical products that have been placed on record by the Defendant using the prefix 'GLO' are in respect of toothpaste (Glodent), a facewash (Glogeous), a gel (Glocin) and two products by the name Globac-Z and Globac-XT which are multi-vitamin products. None of this constitutes relevant third party use, which would justify the use of the word prefix

'GLO‟ in respect of anti-oxidant ophthalmic products.

22. Both parties have cited a long list of judgments in pharmaceutical cases. Each case has to be judged on its own facts. The judgment in Cadila applies on all fours to this case. The overwhelming precedents including in several Division Bench judgments of this Court is that in the case of medicinal and pharmaceutical products, confusion and deception ought to be avoided.

23. It is not necessary for this Court to undertake an analysis of each of the judgments cited by the parties as the same would be merely restating principles which are settled. The cases relied upon by the Defendant where interim injunction has been refused are those where, under certain circumstances, the mark had a connection with the organ which was affected or the ailment to be treated or the name of the active pharmaceutical ingredient of the drug or was derived therefrom. These judgments are clearly distinguishable. Judgments have been cited by the Plaintiff which show that the overwhelming position has been to protect against confusion and deception. In the case of medicinal products, there is a large volume of judgements which can be cited from both sides. In each case, the mark, the ailment, user details, manner of usage etc., are all different.

24. In the final analysis, the question of grant of interim injunction is to be decided on the factual position in each case. This Court holds that nutraceuticals ought to be treated on par with pharmaceuticals. The competing products in this case:

 broadly belong to the same class of ocular medicines used to treat age related dimness of vision and diabetic retinopathy, and  have different ingredients.

 The suffixes EYE and TAB are insufficient to create any distinction between 'GLOEYE' and 'GLOTAB'.

Hence applying the principles laid down in Cadila (supra), the Plaintiff is entitled to an interim injunction. For all the above reasons, the Defendant is restrained from selling any medicinal preparations, nutritional food supplements or any other preparations for human consumption for treating any illnesses, disorders or diseases under the trademark 'GLOTAB‟ or any other mark identical or deceptively similar to the Plaintiff's mark `GLOEYE‟. Since the Defendant's manufacturing license is of 2013 the Defendant is permitted to sell the existing stock of its products and packaging under the mark 'GLOTAB‟ subject to filing quarterly accounts of the same. The Defendant is directed to file an affidavit of a duly authorized person disclosing the exact stock and values of existing 'GLOTAB‟ products/packaging. The said affidavit by a duly authorised person be filed within four weeks. Application is disposed of in the above terms.

PRATHIBA M. SINGH JUDGE MAY 10, 2019 Rahul