CLARITY IN TRADEMARK TUSSLE BETWEEN GLEMARK AND SUN PHARMA VIS-À-VIS THE MARKS – ISTAMET AND INDAMET

Sun Pharma Laboratories Limited

VS

Glenmark Pharmaceuticals Limited

In the year 2010, Sun Pharma’s predecessor applied for the wordmark “ISTAMET” which was later assigned to Sun Pharma on July 06, 2022. Sun Pharma was using the word ISTAMET since 2011 as an exclusive licensee for selling its medicines. Sun Pharma’s predecessor Merck Sharp & Dohme Corp applied for a wordmark in India in the year 2010 under class 5, the same was opposed by a third party and the matter is still pending disposal. While things stood, Glenmark applied for registration of “INDAMET” as a trademark on a “proposed to be used” on December 11, 2020, which is currently opposed. The medicine sold by Glenmark was for treatment of asthma whereas Sun Pharma’s medicine was for management of diabetes and both applied under the same class 5.

While deciding the matter, the Hon’ble High Court, Delhi stated that the only difference between the two words is with regard to “ST” and “ND” thus “INDAMET” is deceptively similar to the “ISTAMET”, both structurally and phonetically. When seen from the perspective of a common man, there are high chances of confusion and deception which may arise. The Hon’ble Court reiterated the judgement passed by the Hon’ble Supreme Court in Cadilla Healthcare v. Cadilla Medicines, (2001) 5 SCC 73 and wherein it was held that – the test of deceptive similarity in relation to pharmaceutical products must be applied to, stringently, keeping public interest paramount. The Hon’ble Court further stated that the differentiation due to packaging and the manner of its usage cannot be considered for determining the difference between both the medicines and the similarity in the words shall be looked into and shall be given primary importance. Furthermore, Sun Pharma’s registration of the mark ISTAMET for the specific use for management of diabetes, should not be construed narrowly and it is necessary to take the end user’s perspective in relation to the pharmaceutical goods.

Another important point that was taken into consideration while determining the matter was the date since both Companies were using the respective marks. Sum Pharma was using the mark since 2011 and Glenmark had applied on a “proposed to be used” basis thus Sum Pharma’s mark was already in use for a significant period and now if Glenmark’s mark was allowed it would cause serious confusion in the minds of the common people.

The Hon’ble Court concluded that it is essential to grant an injunction to be issued in the current case to prevent Sun Pharma from such irreparable injury and to protect public health. The Hon’ble Court restrained Glenmark and all its related parties from manufacturing, offering for sale, selling, displaying, advertising, or marketing any pharmaceutical or medicinal preparations that bear the contested mark “INDAMET” or any other mark that is confusingly similar to Sun Pharma’s registered mark “ISTAMET XR CP” or is identical to it.

1. Sun Pharma Laboratories Limited vs Glenmark Pharmaceuticals Limited, CS(COMM) 711/2022 & I.As. 20492-20493/2022, 1306/2023
2. Cadilla Healthcare vs. Cadilla medicines, (2001) 5 SCC 73
3. United Biotech Pvt. Ltd. vs. Orchid Chemicals & Pharmaceuticals Ltd. & Ors., 2012 SCC OnLine Del 2942.
4. Stiefel Laborataries vs. Ajanta Pharma Ltd., 2014 SCC OnLine Del 3405;
5. M/s South India Beverages vs. General Mills Marketing Inc., 2014 SCC OnLine Del 1953.
6. Novartis AG vs. Crest Pharma, 2009 SCC OnLine DEL 4390

By CS Sakshi Jain, Senior Associate- Corporate and Commercial Laws, and Ms. Janvita Thatha, Intern

Note: This article is not intended to create an attorney-client relationship and is intended for general information purposes only. You are advised not to act or rely on any information in this document and consult a professional legal services provider before acting on the same.