The court affirmed that even slight phonetic and structural similarities between rival trade marks in the pharmaceutical industry can lead to confusion among consumers, warranting protection under trademark law.

ORDER :

Sharmila U. Deshmukh, J.

FACTUAL MATRIX :

1. This is an action for infringement of trade mark, copyright and passing-off. The Interim Application seeks to restrain the Respondent from using the trade mark “ELGIMET”, “ELGIMET-SR 1/500” and “ELGIMET-SR 2/500” or any other identical or deceptively similar mark as that of the Plaintiff’s trade mark “GLIMET” and “GLIMET DS” and from passing off the Defendant’s product as that of the Plaintiff. By order of 4^th September, 2024, an ex-parte ad-interim relief was granted in respect of infringement of trade mark and Court Receiver came to be appointed. Upon service, the Defendants caused appearance. The submission of learned counsel appearing for Defendant No. 1- manufacturer is that Defendant No. 1 intends to settle the dispute amicably with the Plaintiff and hence, no submissions are advanced to oppose the interim relief. Learned counsel appearing for Defendant No. 2 submits that Written Statement has been filed and the same may be treated as Affidavit-in-reply.

2. The Plaintiffs came with the case of the 1st Plaintiff being incorporated in the year 1947 for carrying on business of manufacturing and marketing of medicinal preparation. The 2^nd Plaintiff is the licensee of the trade mark of the 1st Plaintiff. The application and registration of the trade mark “GLIMET” was filed in the year 1992 under Part A of the Trade and Merchandise Marks Act, 1958 in respect of its medicinal preparations, which were used for treatment of diabetes. The registration of its variant “GLIMET DS” is of the year 1999. Over the years, the name of the 1^st Plainti changing and presently its name has been brought on record as registered proprietor of the trade marks. In order to demonstrate the reputation and goodwill, the sales figure is set out which shows that from 1^st April, 2017 to 31^st March, 2023, the sales turnover in respect of the drugs marketed under “GLIMET” and “GLIMET DS” was Rs. 1,95,73,672/- and of Plaintiff No 2 for the period 2013-2014 is Rs 22,51,59,330/. The Plaint also sets out the invoices showing the sales of the product by the Plaintiffs using the trade marks “GLIMET” and “GLIMET DS”.

3. It is submitted that in the second week of June, 2024, the Plaintiff came across the Defendant’s product bearing the impugned mark ELGIMET-SR 1/500 and ELGIMET-SR 2/500 on e-commerce website. A decoy purchase was made and the impugned products showed the name of 2^nd Defendant as marketer of the product bearing the impugned mark. The Plaintiffs conducted a search in the Trade Marks Registry and found that Defendant No. 2 had applied for registration of the impugned mark “ELGIMET” in class 5 on 23^rd August, 2023, on proposed to be used basis, which application is stated not to be not yet advertised in the Trade Marks Journal.

4. The defense is that there is no visual or phonetic similarity between the rival marks. There is objection raised to the territorial jurisdiction of this Court. It is contended that the drugs are prescription drugs and are sold by the qualified licensed pharmacists and therefore, there is no question of likelihood of confusion. The Plaintiff’s registration has been opposed by third-parties and there are other registered identical marks against which no action has been taken by Plaintiffs.

SUBMISSIONS :

5. Learned counsel appearing for Plaintiffs submits that there is visual and phonetic similarity between the rival marks “GLIMET” and “ELGIMET” and being medicinal preparation, greater care is required. He w