Impact of Phonetic Similarity on Medical Products: Glaxo vs. Garg

The Significance of “Phonetic Similarity” for Medical Products...

HK Avenue, 19, Swastik Society
Navrangpura
Ahmedabad - 380 009. INDIA
Phone : +91 79 26425258/ 5259
Fax : +91 79 26425262 / 5263
Email : info@hkindia.com
Web : www.hkindia.com

2123 , Stanford Avenue
Mountain View, CA 94040
United States of America
Tel. : 1 650 964 1434
Fax : 1 650 964 4857

Glaxo Group Ltd. & Anr.
v.
S. D. Garg & Ors.

The Hon’ble High Court of Delhi has passed a significant decision in this case wherein ‘phonetic similarity’ was construed in-depth and the Hon’ble Court held that the use of a trade mark especially pharmaceutical products, if phonetically similar to another trademark, would amount to infringement.

Brief Facts:

1. Glaxo Group Ltd. (Plaintiff No. 1) is the manufacturer of the pharmaceutical products used for the treatment of gastric ailments under the name ‘ZANTAC’ and ‘ZINETAC’ which were registered as trademarks in the year 1985 and 1981 respectively.

2. The Plaintiffs filed the present case of permanent injunction in 2006 against the Defendants for using phonetically similar mark ‘GENTAC’ which amounted to infringement of their registered trademarks ‘ZANTAC’ and ‘ZINETAC’ and passes off the products of the Defendants as that of the Plaintiffs.

Issue:

Whether there was infringement and passing off by the use of the Defendant’s mark inspite of the fact that the Plaintiff’s medicine was sold in the form of tablets and the Defendant’s as injection vial?

Court’s Decision:

• The Hon’ble Court observed that medicinal product of the Plaintiff under the trademark ‘ZANTAC’ and ‘ZINETAC’ and the Defendants’ product under the trademark ‘GENTAC’ contains ‘Ranitidine Hydrochloride’, which is used in the treatment of gastric ailments and the two classes of medicinal products are Schedule ‘H’ drugs;

• The Hon’ble Court was not persuaded by the contention of the Defendants that since the medicinal products can be procured only through a valid prescription there wasn’t any likelihood of confusion in the mind of the buyer. The Hon’ble Court in this regard observed that- while there may be certain amount of assurance to the purchaser of medicines against prescriptions but it does not obviate or negate the likelihood of confusion by an illiterate person or one under stress, given the very high degree of phonetic similarity between the two competitive names for the same cure. The degree of caution in medicinal and surgical products is greater so as to avoid causing any harm to the unsuspecting consumer. Phonetic similarity is vital in the adjudication of a suit for infringement of trade mark apropos medicinal products;

• In view of the aforesaid, the Hon’ble Court was of the view that the Plaintiffs had made out a case of infringement and passing off by the Defendants and hence was entitled to the protection of their trademarks and grant for decree of injunction.

Conclusion

The Hon’ble Delhi High Court has widened the scope of infringement and not just curtailed it to the use of a similar mark/logo/color combination. This case rightly sets an example for the pharmaceutical companies to employ a degree of caution and care while choosing trademarks for their medicines.

MIPR 2015 (2) 0186

Contributed By : Ferzin Daboo (Advocate)
   Designed By : Vikash Singh