Strict test for comparing Nutraceuticals marks
Sun Pharma Laboratories Ltd (Sun) has filed this suit before the Delhi High Court to restrain the Defendant, Ajanta Pharma Ltd (Ajanta) from using the mark GLOTAB. Sun and Ajanta are registered proprietors of the GLOEYE and GLOTAB marks respectively both of which are used for treating eye ailments. Interestingly both parties’ products are registered as Nutraceuticals under the Food Safety and Standards Act (FSS Act). One of the issues that were debated in this case was whether strict test for comparing pharmaceutical marks should be applied to nutraceuticals.
Sun in support of its case contended:
- Their product GLOEYE is an anti-oxidant tablet for age related dimness of vision and diabetic retinopathy, used and registered in Class 5 since July, 2005.
- Ajanta uses the mark ‘GLOTAB’ for age related dimness of vision and diabetic retinopathy and is registered in Class 5 in January, 2011 and used since 2013.
- Sun is the prior user of the mark. Chances of confusion and deception are high as both the products are nutraceuticals and have common prefix ‘GLO’, but, do not have identical composition.
- Even if the products are nutraceuticals the strict test for comparing rival products in case of medicines laid down by Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd is to be applied as both are medicines by nature.
- Sun’s product can be used to treat allergies, whereas, Ajanta’s cannot. Both the products are used by patients post cataract surgeries and should be protected like drugs.
- ‘GLOTAB’ is a registered trademark and as there has been no injunction in the suit since inception in the year 2014, no interim injunction ought to be granted.
- The Trademark authorities have not considered ‘GLOTAB’ and ‘GLOEYE’ to be similar.
- Though the products are nutraceuticals they are prescription drugs.
- Prefix ‘GLO’ is common to the trade.
- ‘GLOEYE’ and ‘GLOTAB’ ought to be compared as a whole and dissection is impermissible.
- Not one instance of confusion in the past.
- The prefix ‘GLO’ is derived from ‘hemoglobin’
- This is a passing off action as the parties are registered proprietors of the respective trademarks. Both the products are nutraceuticals which are highly regulated products under the Food Safety and Standards Act (FSS Act) and cannot be manufactured without a license. Nutraceuticals are used in respect of specific physical conditions, diseases or disorders and are consumed usually on the advice of medical practitioners, though some of them do not require prescriptions. This evidences that nutritional food supplements and nutraceuticals are similar and it is well settled that in respect of medicines and pharmaceuticals deception and confusion need to be avoided.
- Ajanta’s argument that the tests laid down in Cadila case may not be fully applicable in the context of nutritional food supplements and nutraceuticals is not acceptable. Pharmaceuticals and nutraceuticals are used in respect of diseases and disorders and meant to address specific ailment and improve health of patients. The fact that nutraceuticals are termed so and contain ingredients derived from plants does not mean a lenient test needs to be adopted in respect of such products. Thus, the tests applicable to pharmaceutical products would be applicable even to nutraceuticals.
- Sun’s GLOEYE is prior in use. Though both products contain bilberry extracts and are nutritional supplements, their composition, manner of consumption and uses are not identical. While ‘GLOEYE’ can be used for allergy, ‘GLOTAB’ is not used for allergy specifically. Though both products are anti-oxidant retinopathy drugs used for similar medical conditions at the same time there are marked differences as well.
- Ajanta’s argument that ‘GLO’ is taken from haemoglobin fails as the literature in respect of the two drugs does not show any direct connection with haemoglobin. When Ajanta applied for registration of the GLOTAB mark Sun’s mark was already registered and in use as well, thus, claim of bonafide adoption does not seem convincing.
- Ajanta’s contention that there has not been a single instance of confusion in the market ought to fail as the settled law in passing off is that of probability or likelihood of confusion and not actual confusion. The prefix ‘GLO’ being common to the trade is not true as the materials on record do not support third party use of prefix ‘GLO’ in respect of anti-oxidant ophthalmic products.
- The rival products belong to the same class of ocular medicines used to treat age related dimness of vision and diabetic retinopathy, however, have different ingredients. Further, the suffixes EYE and TAB are insufficient to create distinction between ‘GLOEYE’ and ‘GLOTAB’.
In view of the above court granted an injunction in favour of Sun and restrained Ajanta from selling any medicinal preparations, nutritional food supplements or any other preparations for human consumption under the trademark ‘GLOTAB’ or any other mark identical or deceptively similar to ‘GLOEYE’ till disposal of the suit.
Ajanta filed appeal before the Division Bench (DB) of the Delhi High Court, however, the DB refused to interfere with the findings of the Single Judge.