Macleods Pharmaceuticals Ltd (MPL) relying on its rights in the prior used mark ALRISTA filed the suit at the Delhi High Court against the Defendant, Alkem Laboratories Ltd. & Anr, (Alkem) to restrain them from manufacturing, selling, or promoting their pharmaceutical product under the trademark ‘ALSITA’. MPL contends that ALRISTA and ALSITA are deceptively similar to cause confusion in the market.

MPL seeks injunction relying on the following:

1. They adopted the mark ALRISTA in the year 2007.
2. The mark ‘ALRISTA’ is used for formulation containing ‘Epalrestat’ which is used in the treatment of symptoms like burning pain and numbness seen in patients with diabetic nerve disease (neuropathy).
3. The ALRISTA mark is pending registration as it has been opposed by two entities and the opposition proceedings are ongoing before the Trademark Registry.
4. They have extensively sold the ALRISTA branded product and spent a considerable amount to promote the brand.
5. They became aware of the mark ALSITA in October 2023. Further inquiries revealed that Alkem had filed an application for registration of the mark ‘ALSITA’ in class 5 on a ‘proposed to be used’ basis.
6. MPL addressed a cease-and-desist letter to Alkem prior to instituting the suit to which a detailed response was sent by Alkem.
7. The marks ALRISTA and ALSITA are medicinal products treating different ailments but targeting the same patients and thus capable of being co-prescribed.
8. ALRISTA is used to relieve nerve pain, including diabetic nerve disease, while ALSITA treats Type 2 diabetes. Thus, the same patients might use both medications, and the deceptive similarity between the marks could negatively impact their health.
9. They are prior user of the mark ALRISTA since 2007 and Alkem’s adoption is dishonest to ride on the goodwill and reputation of MPL. Even though the ALRISTA mark is pending registration they have common law rights. The competing products will be sold through the same trade channels to same customers.
10. Use of the mark ALSITA would blur the distinctive association between MPL, and their products and the balance of convenience is in their favour.

Alkem counters the injunction application on the following:

1. The rival marks are not similar visually, structurally or phonetically. The trade dresses are also different and there is no question of passing off.
2. Bonafide adoption of the ALSITA mark as it is a combination of ‘AL’ which is taken from the tradename Alkem and ‘SITA’ which is derived from the Active Pharmaceutical Ingredient (API) being ‘Sitagliptin Phosphate’.
3. MPL has suppressed the fact that their application for the ALRISTA mark has been opposed by two entities.
4. MPL did not oppose the ALSITA mark when it was advertised for opposition purposes and Alkem has continued using the mark and acquired goodwill and reputation. There are several entities using marks which contains SITA/ITA suffix which is common to the trade.

After considering the pleadings, arguments and case laws the Court held:

1. It is well settled that stringent standards are set for medicinal products considering that confusion between prescription drugs could lead to harmful effects. The Apex Court has held that confusion between drugs treating the same ailment but having different compositions could lead to serious health issues or even fatalities. The Court emphasized the potential for verbal miscommunication in hospitals, especially in critical circumstances, and the challenges faced by elderly, infirm, or illiterate patients in distinguishing between prescribed and dispensed medicines.
2. In the instant case ALRISTA and ALSITA are phonetically and structurally similar, which could lead to confusion, especially since both drugs are prescribed to diabetic patients for different indications.
3. Alkem claims bonafide adoption of the ALSITA mark as ‘AL’ is taken from their trading name and ‘SITA’ is a common abbreviation for Sitagliptin. However, this will not protect them from the settled legal principles that prioritize avoiding confusion in medicinal products. Several decisions have held that avoiding confusion, especially in medicinal products, is paramount and that prior users have significant protection under common law.
4. Alkem’s argument that there are other products with similar prefixes and suffixes does not have much relevance considering the anti-dissection rule, which emphasizes assessing the marks as a whole, more so in pharmaceuticals.

Court grants injunction in favour of MPL

Considering the above the Court granted an injunction in favour of MPL restraining Alkem from using the mark ‘ALSITA’ or any similar mark. However, allowed them to dispose of their existing stock within a period of eight weeks and provide the details of by way of an affidavit within two weeks.

Comment

This order reinforces that patient safety is paramount and confusion should be avoided. Despite Alkem’s arguments of bona fide adoption and market presence of similar suffixes, the Court focused on the likelihood of confusion between the rival trademarks.