The Bombay High Court (Commercial Division) has confirmed interim relief in favour of Laboratories Griffon Pvt. Ltd., restraining Adwin Pharma and its marketer (Defendant No. 2) from using the marks ELGIMET, ELGIMET-SR 1/500, and ELGIMET-SR 2/500, holding them deceptively similar to the plaintiffs’ long-standing registered trademarks GLIMET and GLIMET DS.
Justice Sharmila U. Deshmukh held that the defendants’ mark, created by interchanging the first two letters and adding a vowel, bore clear structural and phonetic similarity to the plaintiff’s mark both being medicinal preparations for diabetes where stricter scrutiny applies. Observing that the plaintiffs’ mark, registered in Part A of the 1958 Act, is distinctive and enjoys decades of use, the Court found that even slight likelihood of confusion in pharmaceutical products is unacceptable.
The Court rejected the defence that the plaintiffs’ trademark was descriptive, holding that while individual drug ingredients cannot be monopolised, the plaintiffs’ unique combination forming the coined mark GLIMET is protectable. The Court also noted the defendants’ failure to produce any documents demonstrating bona fide adoption or substantial market presence.
On the issue of passing off, the Court noted that it is a tortious action founded on deceit, requiring the classic trinity of goodwill, misrepresentation, and likelihood of damage. While the plaintiffs established goodwill, the Court found no prima facie evidence of misrepresentation. The defendant’s packaging, pricing, and product presentation did not show an attempt to pass off its product as that of the plaintiffs. Given the absence of any such deceptive conduct, the Court declined to grant interim relief on the passing-off claim.
Despite this, the Court held that a strong prima facie case of trademark infringement existed and accordingly confirmed the earlier ad-interim injunction of September 2024, restraining the defendants from using the impugned marks in any manner.
Appearances:
Mr. Rashmin Khandekar, Ms. Archita Gharat, Mr. Kiran Mehta i/b Mr. Kiran J. Mehta for Plaintiffs.
Ms. Bhavi Gada i/b Ms. Pooja Jain for Defendant Nos. 1, 1A and 1B (through VC).
Mr. Rajiv Gupta i/b Ms. Nisha Kaba, Mr. Abhijit Singh, Ms. Shivani Upadhyay for Defendant No. 2.
