07 二月 2017

Phonetically and deceptively similar Trademarks prohibited in pharmaceuticals

Facts in brief :

Plaintiff, Intas Pharmaceuticals Ltd, is a registered user of trademark “GABAPIN”. “GABAPIN”, in 1997, was adopted for marketing its medicinal product containing a chemical compound known as “Gabapentine”. Defendant, Macleods Pharmaceuticals Ltd. launched its medicinal product in 2006, containing “Gabapentin” and “Mecobalamin” under mark “GABAMIN”. In due course, the defendant also started manufacturing another medicinal preparation containing chemical compounds “Gabapentin” and “Nortriptylin” under mark “GABAMIN NT”. The Plaintiff thus filed a civil suit and application under Order 39 Rule 1 and 2 CPC against the defendant for infringing the trademark “GABAPIN” before the Delhi High Court (HC) and prayed for ad interim relief.

In the suit, the plaintiff impugned the marks used by the defendant to be identical to the plaintiff’s products and contended that the mischief of the marks used by the defendant were on account of phonetic similarity. The defendant contested the suit by arguing that the expression “GABA” was used only because of it being derivative of the chemical compound “Gabapentin”. The defendant further claimed that the prefix “GABA was a generic term and the suffix “MIN” was sufficient to distinguish their product from that of the defendant’s.



The Delhi High Court allowed the application under Order 39 Rule 1 and 2 CPC for temporary injunction vide its judgement dated 25 January 2017.


Analysis and principle laid down:

The Delhi HC held that the defendant had not challenged the validity of the registration of the plaintiff’s mark and therefore, held that the defendant cannot ordinarily raise objections on the ground that prefix “GABA” was generic in nature. The HC also pointed out that it was not permissible for the mark to be split up in order to compare them. The High Court opined that the two marks “GABAPIN” and “GABAMIN” were phonetically and deceptively similar and further held that the similarity by itself would justify the grant of an ad interim injunction [Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1973 SC 449 and Novartis AG v. Crest Pharma Pvt. Ltd., IA No. 5495/2008 in CS(OS) 851/2008]. Accordingly, the Delhi High Court granted ad interim injunction against the defendant and all the other parties concerned with the defendant.



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