India – Test For Determining Trademark Similarity For Nutraceutical Products Is The Same As The Test Applicable For Pharmaceutical.

In a suit for trademark infringement and passing off filed by Sun Pharma Laboratories Ltd. for its mark GLOEYE against Ajanta Pharma Ltd, which was using GLOTAB, the Delhi High Court held that principles laid down in Cadila in respect of medicines and pharmaceuticals would be equally applicable to Nutraceuticals and nutritional supplements. In Cadila judgment, the Supreme Court inter alia held that a stricter test needs to be applied for determining confusion and deception. The Court granted an interim injunction against the Defendant's use of the trademark GLOTAB.

 

It was argued by the Plaintiff that since both the products are nutritional supplements and 'GLO' is the main prefix, chances of deception and confusion are extremely high. Both the products were being used by patients of age-related dimness of vision and diabetic retinopathy. It was argued that the test laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. must be applied in case of products which are used to treat any ailment, even if they are not pharmaceuticals, as both are medicinal by their very nature.

 

The Defendant argued that both products are prescription drugs, though they are nutraceutical products and that the prefix 'GLO' is common to the trade. It was argued that the marks 'GLOEYE' and 'GLOTAB' ought to be compared as a whole and dissection of the two is impermissible. The Defendant argued that it has been using its mark for the last four to five years and till date there has not been even one instance of confusion and thus there could be no likelihood of confusion.

 

It was observed by the court that the manner of approval of nutraceuticals and nutritional food supplements under the FSSAI regime shows that these are highly regulated products and cannot be manufactured without a license. The product, the packaging, the labels, the content of the labels, specific disclaimers and conditions have all to be approved by the Food Authority. The court held that as products are highly regulated, nutritional food supplements and nutraceuticals are akin to medicines and pharmaceutical preparations.

 

The court relied on the following factors/ tests laid down in Cadila:

 

1. In the case of drugs, a strict test needs to be applied for determining confusion and deception;
2. If the products have a difference in composition with completely different side effects, a stricter test should be applied;
3. Greater vigilance is required where the products are meant to cure the same ailments, but the compositions are different;
4. Merely because drugs are sold under prescription is not sufficient protection against confusion;
5. The prevalent social conditions and linguistic barriers require stricter measures to be taken, to prevent confusion arising from similarity of marks among medicinal products;
6. Physicians and pharmacists are not immune to mistakes;
7. A lesser degree of proof to establish confusing similarity would be required in the case of medicinal products as against non-medicinal products;
8. The varying profiles of patients, especially the elderly, illiterate persons and children need to be kept in mind;
9. In view of public health issues involved in the case of medicines, stringent measures ought to be adopted.

 

The court was of the opinion that the mere fact that these products are nutritional food supplements or nutraceuticals does mean that it needs a less stringent test. It was observed that the pharmaceuticals and nutraceuticals are used in respect of diseases and disorders and both are meant to address specific ailments. Since the effects of the products and the consumers of the products are similar in nature, the court held that the test applicable to pharmaceutical products would be applicable even to nutraceuticals.

The court was not convinced by the Defendant's explanation that 'GLO' is taken from haemoglobin as the two drugs did not show any direct connection with haemoglobin. The court relied on the following factors to hold that the mark 'GLOEYE' is deceptively similar to 'GLOTAB':

 

1. 'GLOTAB' and 'GLOEYE' have the same prominent prefix, namely, 'GLO
2. The Plaintiff's product 'GLOEYE' is a tablet. 'TAB' is nothing but a short form for 'tablet';
3. The composition of these two products is different though both are ocular medicines.
4. The suffixes 'EYE' and 'TAB' in fact do not sufficiently distinguish the two products – and in fact enhance the chances of confusion;
5. Both are nutritional food supplements. Both contain bilberry extract, but the remaining ingredients are different;
6. The chances of 'GLOTAB' being prescribed in place of 'GLOEYE' or a patient being dispensed with 'GLOTAB' in place of 'GLOEYE' is quite high and cannot be eliminated.

 

The Court while applying the principles laid down in Cadila granted an interim injunction in favour of the plaintiff against the Defendant's use of the trademark GLOTAB.