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

1. This suit seeks permanent injunction against infringement of the trademarks ‘ZANTAC’ and ‘ZINETAC’ and their passing-off by the defendants. Plaintiff No.1 is a company incorporated under the laws of the United Kingdom while plaintiff No.2 was incorporated in India in 1924 under the name of H.J. Foster & Co. It became a wholly owned subsidiary of Joseph Nathan & Co. in

1926. In October 2001, plaintiff No.2 was renamed as GlaxoSmithKline Pharmaceuticals Ltd, following the merger with SmithKline Beecham Pharmaceuticals (India) with Glaxo India Limited.

2. Plaintiff No.1 is the owner of the trademarks ‘ZINETAC’ and ‘ZANTAC’, which were registered in the year 1985 and 1981 respectively. The trademarks are associated with medicinal 2015:DHC:4231 preparation, and it contains ‘Ranitidine Hydrochloride’ which is used in the treatment of gastric ailments. It is stated that ‘ZANTAC’ is administered in the form of tablets, suspension and injection. It is the case of the plaintiffs that these two trademarks have been used in India consistently and extensively to the extent that a common man might associate these names for the treatment of gastric ailments, akin to how one would associate popular branded Paracetamol tablets for the treatment of fever. It is stated that the plaintiffs’ pharmaceutical products bearing the marks ‘ZINETAC’ is extensively sold in India; whereas the medicinal products bearing the trademark ‘ZANTAC’ is available in many parts of the world. As a result of their extensive recognition and goodwill, the two trademarks have come to be associated exclusively with the medicinal products manufactured and traded by the plaintiffs. It is further submitted that the defendants’ action of reproduction of the plaintiffs’ medicinal products under a deceptively similar mark ‘GENTAC’ amounts to infringement of their registered trademarks and also to passing-off.

3. Mr. Manav Kumar, the learned counsel for the plaintiffs submits that while the plaintiffs medicinal product are predominantly sold in the form of tablets as opposed to the defendants’ selling their medicinal product in the form of injection vials, the method of administration of the medicines would not affect the plaintiffs’ suit against infringement. The learned counsel further submits that in a suit for infringement what requires determination is, whether the infringing products are likely to create confusion in the mind of a purchaser. In support of this contention, the learned counsel relies upon Cadila Health Care Limited v. Cadila Pharmaceuticals Limited[1] and Novartis AG v. Crest Pharma Pvt. Ltd & Anr 2. The learned counsel submits that ‘ZANTAC’ is an invented word having no specific dictionary meaning thereby containing a high degree of distinctiveness. In such circumstances, the defendants’ action to use the mark ‘GENTAC’ would amount to passing off and infringement of the plaintiffs’ trademarks. Apart from the packaging of GENTAC being similar to that of the plaintiffs’ medicinal products, the learned counsel submits that ‘GENTAC’ is phonetically similar to that of the plaintiffs’ medicinal products. There is hardly a discernible difference between the two classes of medicinal products.The difference between ZANTAC and GENTAC is rather difficult to be differentiated by a man with average intelligence. Furthermore, keeping in view of the literacy rate of the population in the country, it is likely that a purchaser would buy GENTAC instead of the plaintiff’s products.In support of this contention, the learned counsel relies on K. Krishna Chettiar v.Ambal & Co. 3 which held:

10. There is no evidence of actual confusion, but that might be due to the fact that the appellant‟s trade is not of long standing. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal.

11. In the case of Coca-Cola Co. of Canada v. Pepsi Cola Co. of Canada Ltd., 1942-59 RPC 127, it was found that cola was in common use in Canada for naming the beverages. The distinguishing feature of the mark cocacola was coca and not cola. For the same reason the distinguishing feature of the mark Pepsi Cola was Pepsi and cola. It was not likely that any one would confuse the word Pepsi with coca. In the present case the word “Sri” may be regarded as in common use. The distinguishing feature of the respondent‟s mark is Ambal while that of the appellant‟s mark is Andal. The two words are deceptively similar.”

4. The learned counsel further submits that since both parties are involved in the manufacture and trade of identical products, it is possible that the buyers would confuse the defendants’ product to be that of the plaintiffs’. It is submitted that the past actions of the defendant reflect their intention to infringe the plaintiffs’ registered trademarks. It is stated that the plaintiffs had initiated a suit for infringement of trademarks and copyrights, being suit NO. 326 of 2004, against the defendant when the latter started to manufacture a medicine under the trade name ‘BECNATE’ with a packaging similar to that of the plaintiffs’ product ‘ BETNOVATE’. However, by order dated 06.04.2005, this Court restrained the defendants from manufacturing or dealing in products that were similar to the product of the plaintiffs.

5. Mr. Inder Deep Singh, the learned counsel for the defendants submits that the trademark ‘ZANTAC’ is not associated with any medicinal product and that the trademark is a dummy registration. Furthermore, the plaintiffs have failed to lead evidence apropos ‘ZINETAC’. Under such circumstances, the plaintiffs cannot claim any protection of their trademarks. It is submitted that while ‘GENTAC’ has commercial goodwill, the plaintiffs have failed to show the existence of the same for their products. It is submitted that there can be no possible cause for confusion between the two classes of the medicines as the defendants’ product is exclusively sold in the form of injections as opposed the plaintiffs’ products being sold in the form of tablets. In addition, the two classes of medicines being ‘H’ scheduled drugs; a buyer cannot procure the medicines without producing a medical prescription to the chemist. Accordingly, it is submitted, that there is no possibility of any confusion being created in the mind of the buyer.

6. The learned counsel further contends that the plaintiffs cannot claim an infringement of a trademark when they have failed to prove that the said registration subsists; that the plaintiffs have not produced any document to show that they have applied for renewal of the registration of trademarks and that non-use of a trademark for a long period of time would bar the applicant from such seeking registration or renewal thereof. It is submitted that the object of a registered trademark is to enable proprietorship over the same when it is put to use and not to monopolize the trademark indefinitely. On this point, the learned counsel relies upon Veerumal Praveen Kumar v. Needle Industries (India) Ltd. and Anr. 4 wherein this Court held: