In a significant ruling concerning pharmaceutical trademark infringement, the Bombay High Court granted interim relief in favour of Laboratoires Griffon Private Limited, restraining the Defendants from using the marks “GLYNET” and “GLYZET” or any other mark deceptively similar to the Plaintiffs’ registered trademarks “GLIMET” and “GLIMET DS.” The Court also directed initiation of perjury proceedings against Defendants and imposed ₹50 lakh as costs, citing their breach of undertakings and false statements on oath.

Background of the Dispute

The Plaintiffs are the registered proprietors of the trademarks “GLIMET” and “GLIMET DS” in Class 05 for pharmaceutical preparations used in the treatment of diabetes. Plaintiff No. 2, a sister concern of Plaintiff No. 1, has been granted a limited, non-exclusive licence to manufacture and sell products under these marks under the supervision of Plaintiff No. 1.

In 2021, the Plaintiffs instituted a suit before the Bombay High Court against the Defendants and ZeeLab Generic Pharmacy challenging the use of the mark “GLYNET.” The suit was disposed of by an order dated March 11, 2021, after the Defendants made a statement before the Court that they would discontinue the use of “GLYNET” and any of its variants and take steps to withdraw their pending trademark applications.

The Defendants also informed the Court that certain stock bearing the impugned mark had already entered the market. Accordingly, the Court granted them 90 days to clear the existing stock, after which any unsold goods were to be destroyed or repackaged after removing the impugned marks. In view of the undertaking given by the Defendants, the suit was decreed in favour of the Plaintiffs, who chose not to press their claim for damages.

Plaintiffs’ allegations in the present suit

The Plaintiffs later discovered that the Defendants had continued manufacturing and selling products under the mark “GLYNET,” in violation of the undertaking recorded by the Court. They also found that the Defendants had adopted a new mark, “GLYZET,” for an identical pharmaceutical product used for the treatment of diabetes.

The Plaintiffs placed online orders in July 2021 for products advertised under the mark “GLYZET.” However, the goods delivered bore the mark “GLYNET.” Although the invoices referred to the product as “GLYZET,” the packaging prominently displayed “GLYNET,” and the products bore a manufacturing date of May 2021, indicating continued production even after the Court’s earlier order.

According to the Plaintiffs, the adoption of “GLYZET” was merely an attempt to make minor alterations to their mark “GLIMET.” The substitution of the letters “I” and “M” with “Y” and “Z” did not eliminate the likelihood of confusion, particularly since the competing products were pharmaceutical preparations intended for the same therapeutic purpose.

The Plaintiffs also alleged that the Defendants had made false statements on oath by claiming that the use of “GLYNET” had ceased after the order dated March 11, 2021 and that the impugned products were manufactured prior to that date.

Defendants’ Submissions

The Defendants argued that the earlier suit had not been decided on merits but had merely been disposed of on the basis of their recorded statement before the Court. They also submitted that once the present suit was filed and ex parte ad-interim relief was granted, they had discontinued the use of the mark “GLYZET.”

They further contended that:

1. The marks “GLYZET” and “GLIMET” were visually, structurally and phonetically distinct.
2. The packaging of the rival products was different, eliminating the likelihood of confusion.
3. The mark “GLYZET” had been honestly adopted, with “GLY” referring to the active pharmaceutical ingredient Glimepiride and “ZET” derived from the Defendants’ corporate name “ZEM.”
4. The manufacturing date printed on the strips was May 2020, prior to the Court’s earlier order, and the endorsement “Read as GLYZET-PM2 Tablets” indicated that there was no intention to breach the undertaking.

Court’s Findings

After examining the record and the rival marks, the Court held that the Plaintiffs had established a strong prima facie case for interim relief.

The Court observed that the Plaintiffs were the registered proprietors of the marks “GLIMET” and “GLIMET DS,” and the Defendants were already aware of these rights due to the earlier litigation.

Dishonest Adoption

The Court rejected the Defendants’ explanation for the adoption of “GLYZET.” It observed that if the mark had genuinely been derived from Glimepiride and the corporate name “ZEM,” the resulting mark would logically have been “GLYZEM.” The adoption of “GLYZET” therefore appeared to be a deliberate attempt to imitate the Plaintiffs’ mark “GLIMET.”

Deceptive Similarity

The Court held that “GLYZET” was deceptively similar to “GLIMET.” Both marks shared the same prefix “GL” and suffix “ET,” had similar lengths and structures, and were phonetically similar.

The substitution of “IM” with “YZ” was considered a minor variation that would not dispel confusion, particularly in the context of oral prescriptions and sales of medicines in India.

Stricter Approach for Pharmaceutical Products

The Court emphasized that a higher degree of caution is required in cases involving pharmaceutical products, as confusion between medicines can pose serious risks to public health. Even a possibility of confusion between competing medicinal products is sufficient to justify the grant of an injunction.

Breach of Undertaking and False Statements

The Court also found that the Defendants had breached the undertaking recorded in the order dated March 11, 2021 by continuing to manufacture and sell products under “GLYNET.” Documentary evidence indicated that products bearing the mark had been manufactured in May 2021, well after the Court’s order.

Further, the Court concluded that certain Defendants had made false statements on oath regarding the cessation of use of the impugned mark, thereby misleading the Court.

Relief Granted

In view of these findings, the Court granted an interim injunction restraining the Defendants from manufacturing, selling, advertising, or dealing in pharmaceutical products under the marks “GLYNET,” “GLYZET,” or any other mark deceptively similar to the Plaintiffs’ registered trademark “GLIMET.”

The Court also directed that appropriate action be initiated against the Defendants for perjury for making false statements on oath.

Additionally, considering the Defendants’ breach of undertaking, continued infringement, and misleading conduct, the Court imposed exemplary costs of ₹50 lakh payable to the Plaintiffs.

Conclusion

The ruling reiterates the strict standards applied by courts in pharmaceutical trademark disputes, where even minor variations between competing marks may not be sufficient to avoid confusion. It also highlights that breach of undertakings given to the court and false statements on oath can attract serious consequences, including perjury proceedings and substantial monetary costs.