A Division Bench comprising justices Yashwant Varma and Dharmesh Sharma while dismissing the Glenmark’s appeal also vacated its July order that had kept the injunction order granted by the single judge in abeyance.
The division bench said that the single judge was “justified in identifying the dominant feature of the two competing marks to be INDAMET and ISTAMET. Merely because ‘XR’ and ‘CP’ were removed from consideration in the course of identification of the prominent features of the two marks would not warrant the marks themselves being reconstructed in the manner as suggested by the appellant (Glenmark). This, in any case, since this was not a matter where Sun Pharma was claiming an exclusive right to use the suffix MET,” it said in its 83-page order.
“We ultimately bear in mind the indubitable fact that ISTAMET and INDAMET are meant to attend to chronic ailments. It would therefore be perilous to ignore the test of heightened scrutiny … while considering the issue of deceptive similarity. We also bear in mind the undisputed fact that ISTAMET had been available in the market right from 2011 whereas Glenmark chose to launch its product only on June 16, 2022 and that too after an opposition to its mark had come to be filed by Sun Pharma on May 27, 2022. The question of balance of convenience was thus rightly answered by the single judge while passing the impugned order,” according to the judgement.
Sun Pharma Laboratories, a wholly-owned subsidiary of Sun Pharmaceutical Industries, and Glenmark are contesting over their right to use drug names “Istamet” and “Indamet”, respectively, which Sun Pharma finds to be deceptively similar and confusing. While Sun Pharma’s medicine Istamet sold in the form of tablets under the extensions – ISTAMEsT, ISTAMET XR, and ISTAMET XR CP – is a Schedule ‘G’ drug, Glenmark’s medicine under mark Indamet is a Schedule ‘H’ drug used for treatment of asthma.
Glenmark had argued that the drug sold under the mark Indamet was distinguishable from the one sold under the mark Istamet or Istamet XR CP, since both were for different ailments, had different packaging and the former was sold as a capsule to be inhaled with a dry-powder inhaler whereas the latter was sold as a tablet.However, Sun Pharma asserted that the impugned mark INDAMET was confusingly similar to ISTAMET when tested on the principles of visual, structural and phonetic similarity. It also argued that the adoption of the impugned mark by Glenmark amounts to infringement and would result in erosion of the distinctiveness of Sun Pharma’s mark. Besides, it alleged that a human error in reading or construing Glenmark‘s mark could mislead a user into purchasing an incorrect medicine and thus will have an adverse impact.
