GLENMARK PHARMACEUTICALS LTD vs SUN PHARMA LABORATORIES LTD

* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on: 22 January 2024
Judgment pronounced on: 16 April 2024

+ FAO(OS) (COMM) 146/2023 & CM APPL. Nos. 36508/2023 (Stay), 36509/2023 (summoning entire court record).

GLENMARK PHARMACEUTICALS LTD. ….. Petitioner
Through: Dr. Abhishek Manu Singhvi & Mr. Amit Sibal, Sr. Advs. with Mr. Sidharth Chopra, Mr. Nitin Sharma, Mr. Kanishk Kumar, Ms Deepika Pokharia, Mr. Naman Tandon, Mr. Diwakar Chaturvedi, Mr. Nidhi Ram, Mr. Rishabh Sharma, Mr. Shaksham Dhingra & Mr. Mahesh Mahadgut, Advs.

versus

SUN PHARMA LABORATORIES LTD. ….. Respondent
Through: Mr. Mukul Rohatgi & Mr. Jayant Mehta, Sr. Advs. with Mr. Sachin Gupta, Mr. Sameer Rohatgi, Ms. Ayushi Kumar, Ms. Gaurangi Sharma, Mr. Rohit Pradhan, Mr. Kartikey Singh, Mr. Raghav Dutt & Mr. Ajay Kumar, Advs.

CORAM:
HON’BLE MR. JUSTICE YASHWANT VARMA
HON’BLE MR. JUSTICE DHARMESH SHARMA

J U D G M E N T

YASHWANT VARMA, J.

1. This appeal is directed against the judgment dated 03 July 2023 passed by a learned Single Judge in terms of which an interim injunction came to be granted in favour of the plaintiff/respondent restraining the defendant/appellant from using the word “INDAMET” or any other mark which may be said to be identical or deceptively similar to the plaintiff’s registered mark “ISTAMET XR CP”.
2. When the appeal was originally entertained, we had by an order of 26 July 2023, placed the temporary injunction so granted in abeyance. We had the privilege of hearing detailed and erudite submissions addressed by Dr. Singhvi and Mr. Amit Sibal, learned senior counsels appearing for the appellant and Mr. Mukul Rohatgi and Mr. Jayant Mehta, learned senior counsels appearing for the respondents.
3. For the purpose of final disposal of the instant appeal we propose to take note of the following salient facts. The plaintiff/respondent Sun Pharma Laboratories Ltd.1 is asserted to be one of the leading pharmaceuticals companies in the world and is a wholly-owned subsidiary of Sun Pharmaceutical Industries Ltd.2. SPIL has operated in the pharmaceutical sector since 1978 and markets drugs and formulations across 150 countries under various brand and trade names. It is also stated to have 45 manufacturing sites spread over 6 continents, 10 world class Research Centres and employs over 37,000 individuals.
4. In 2010 Sun Pharma’s predecessor Merck Sharp & Dohme Corp.3 is stated to have coined and adopted the trademark “ISTAMET” and applied for registration of the said mark. The mark “ISTAMET” is stated to have been assigned by Merck to MSD International GmBH4 on 01 July 2022, and which in turn and thereafter, assigned the same to Sun Pharma with respect to India vide an Assignment Deed dated 6 July 2022. Merck is stated to have used the trademark “ISTAMET” in India since 2011.
5. Merck’s first application for registration of “ISTAMET” as a word mark was filed on 02 December 2010. The aforesaid application is stated to have been opposed by a third party and which challenge is still pending consideration. On 22 April 2014, Merck filed another application for registration of “” as a device mark. In the course of examination, the Registrar of Trade Marks5 is stated to have cited “ASTAMET”, “INSTAMET” and “ESTIMET” as conflicting marks. The said application ultimately came to be refused by an order dated 28 September 2018. The refusal came to be assailed by the predecessor of Sun Pharma by way of C.A.(COMM.IPD-TM) 22/2022. The aforesaid appeal was ultimately allowed by our Court in terms of a judgment rendered on 20 April 2023. An event of some significance connected with the aforesaid appeal, and which merits notice, is the following.
6. In the course of prosecution of the aforenoted application, Merck is stated to have taken the position that ASTAMET, INSTAMET and ESTIMET were not deceptively similar. Aggrieved by the refusal of that application, Merck had preferred the appeal details of which have been set out hereinabove. In that appeal, Sun Pharma moved an application for amendment of the grounds of appeal and sought to reverse the stand that had been taken by Merck with respect to deceptive similarity concerned with the cited marks. Sun Pharma asserted that it could not be held bound by the stand taken by its predecessor. This, Sun Pharma contended, more so when the issue of deceptive similarity is essentially one of law. It appears to have been additionally urged that cyclostyled replies submitted in the course of proceedings taken before the Registrar cannot be viewed as being determinative of the question. It was further asserted by Sun Pharma that no products bearing the marks INSTAMET, ASTAMET or ESTIMET were found existing in the market. It had also alluded to the registration of those marks itself having lapsed. The said application for amendment came to be allowed by the Court on 13 April 2023.
7. The appeal thereafter came to be allowed on 20 April 2023 with the Court holding as follows: –
“3. The present status of conflicting cited marks, in accordance with the status reflected on the online portal of the Trade Marks Registry, is given in a tabular representation below:

SL. No.
CITED MARKS
CURRENT STATUS
1. and 2.
Word mark – ‘ASTAMET’ under Trade Mark Application No. 1366667
(Valid up/ renewed up to 27th June, 2015)
Likely to be removed due to non-filing of renewal request in prescribed timelines.

Word mark – ‘INSTAMET’ under Trade Mark Application No. 1755265
(Valid up/ renewed up to 19th November, 2018)

4.
Word mark – ‘ASTAMET’ under Trade Mark Application No. 2273369
Refused.

This brings us to conflicting mark at Sl. No. 3 – ‘ESTIMET’ registered under Trade Mark Application No. 1894414. The said mark has been recently renewed and is valid up to December 2029. However, Mr. Sachin Gupta, counsel for Appellant, has pointed out that, as per his information, the said mark is not in use. To buttress his submissions, he places reliance on the screenshots of e-commerce portals where the products under the name ‘ESTIMET’ has been advertised/ marketed, but are shown as unavailable. As regards similarity with the conflicting marks, Mr. Gupta argues that resemblance is immaterial as the marks are not in use. He requests that Appellant’s application should be allowed to be advertised and objection, if any, can be considered at the stage of opposition.

4. Appellant has a registration of word mark ‘ISTAMET XR CP’ under Trade Mark Application No. 2753891. This mark, although not identical to subject mark, certainly includes the word ‘ISTAMET’ and has been in use since the year-2011. Considering the facts noted above, in the opinion of the Court, the mark can be allowed to be advertised before acceptance.

5. In view of the above, the present appeal is allowed with following directions:
(a) Impugned Orders are set-aside.
(b) Trade Marks Registry is directed to process the registration application for the subject mark.
(c) Subject mark be advertised before acceptance as per proviso of Section 20 of the Act, within a period of three months from today. On advertisement in the Trade Marks Journal, an intimation shall also be sent by Trade Marks Registry to the registered proprietors of the cited marks, as per the Examination Report.
(d) If there is any opposition, the same shall be decided on its own merits, uninfluenced by observations made hereinabove.
(e) Appellant shall also send a copy of the order passed today to the proprietors of competing/ cited marks.”

8. Merck obtained registration of the trademark “ISTAMET XR CP” pursuant to an application dated 11 June 2014 which was made on a “proposed to be used basis”. The same came to be ultimately accepted on 07 February 2021 subject to the condition that “the mark to be read as whole”. It is pertinent to note that “XR” is stated to be an acronym for “Extended Release” while “CP” is stated to be an abbreviation for “Combi-Pack”.
9. According to Sun Pharma, “ISTAMET” contains the salt ‘Metformin Hydrochloride’ and ‘Sitagliptin Phosphate Monohyrdrate’ and is used to treat diabetes. The aforesaid formulation is sold in the form of tablets under the extensions “ISTAMET”, “ISTAMET XR” and “ISTAMET XR CP” and is a Schedule ‘G’ drug. Sun Pharma had alleged that in May 2022 it came across the appellant’s/ Glenmark’s application for “INDAMET” which had been submitted on a “proposed to be used” basis. The mark “INDAMET” is stated to have been granted registration on 26 May 2021. Taking recourse of the order dated 21 March 2022 in Dr. Reddys Laboratories Ltd. vs. Controller of Patents Designs & Trade Marks6, and which had extended the limitation for filing of opposition till 30 May 2022, both SPIL and Merck filed their opposition on 27 and 30 May 2022. It was the case of Sun Pharma that it was in the first week of September 2022, and after filing of the opposition, that it came across Glenmark’s listing of the medicine and consequently instituted the suit in question.
10. Sun Pharma appears to have asserted before the learned Single Judge that the impugned mark, namely, “INDAMET” is confusingly similar to “ISTAMET” when tested on the principles of visual, structural and phonetic similarity. It was further asserted that the adoption of the impugned mark by Glenmark amounts to infringement under Sections 29 (1) and (2) of the Trade Marks Act, 19997 and would result in erosion of the distinctiveness of Sun Pharma’s mark. It was further alleged that a human error in reading or construing Glenmark’s mark could mislead a user into purchasing an incorrect medicine and thus have an adverse impact. Considering the likelihood of confusion on account of similarity between the two marks, Sun Pharma asserted that public interest must be accorded precedence bearing in mind the principles enunciated by the Supreme Court in Cadila Healthcare vs. Cadila Pharmaceuticals8.
11. Insofar as the appellant9 is concerned, it appears to have contended that “INDAMET” constituted a novel fixed dose combination drug for treatment of uncontrolled asthma. It was their case that “INDAMET” is distinguishable from “ISTAMET”/ “ISTAMET XR CP” since both are meant to treat different ailments and are also packaged distinctively. It was contended that while “INDAMET” is sold as a capsule to be inhaled with the aid of a Dry Powder Inhaler10, “ISTAMET” is consumed as a tablet and thus there is no likelihood of confusion. It also appears to have been averred that Sun Pharma had failed to obtain registration for the mark “ISTAMET” and the registration held by it in respect of “ISTAMENT XR CP” is liable to be read as a composite whole in terms of the specific restrictions imposed by the Registrar while granting the mark. In view of the above, Glenmark argued that Sun Pharma can claim no monopoly or exclusive right over the mark “ISTAMET”.
12. Without prejudice to the above, Glenmark averred that it had coined the term “INDAMET” from the constituent chemical compounds with “INDA” representing “Indacaterol acetate” and “MET” standing for “Mometasone furorate”. Similarly, it was contended that Sun Pharma’s drug “ISTAMET” also appears to have adopted the word “MET” from the usage of a constituent compound, namely, “Metformin” contained therein. In view of the above, Glenmark contended that Sun Pharma’s allegations are wholly unfounded.
13. It was further asserted that Sun Pharma could claim no monopoly over the term “MET” given that it is common to the trade. It was contended that various drugs using the suffix “MET” are available in the market and thus the allegations as levelled by Sun Pharma are wholly untenable. The appellant also appears to have sought to draw distinction between the two competing marks by virtue of Sun Pharma’s drug falling under Schedule ‘G’ whereas that of Glenmark’s having been placed in Schedule ‘H’. It also appears to have been argued before the learned Single Judge that Sun Pharma had taken an inconsistent and contradictory stand in the course of examination proceedings evidenced from it having sought to distinguish its mark from a cited conflicting mark, namely, “INTAMET”. It was pointed out that Sun Pharma took an identical stand when the Registrar had cited “ASTAMET”, “INSTAMET” and “ESTIMET”. The aforesaid admission, according to Glenmark, was sufficient to warrant the refusal of injunction.
14. The learned Single Judge had upon considering the aforesaid submissions firstly held against Glenmark on grounds of deceptive similarity by holding that although Sun Pharma’s registration was for the composite mark “ISTAMET XR CP”, the dominant feature thereof is liable to be recognized as “ISTAMET”. In view of the aforesaid, the learned Single Judge held that the distinguishing feature of Sun Pharma’s mark is the term “ISTAMET” and which when compared to “INDAMET” exhibits striking similarity. The learned Single Judge held against the appellant also on the grounds of structural and phonetic similarity. This is evident from paragraph 7 of the impugned judgment, which is reproduced hereinbelow:
“7. The restriction that Sun Pharma’s mark has to be read as a whole, is a reiteration of Section 17 of the Act, which provides that when a trademark consists of several matters, its registration shall confer exclusive right to use of the trademark taken as a whole. It must be noted that protection afforded to a trademark is based on mark’s overall impression on the consumers and not just one particular feature. The distinctive element or combination of elements is typically the most essential feature of the mark and the same is entitled to protection, as it sets the mark apart from others in the market and makes it identifiable to consumers. Although Sun Pharma’s registration is for the composite mark “ISTAMET XR CP”, the dominant feature indisputably remains the word “ISTAMET”. Furthermore, the terms “XR” (denoting ‘extended release’) and “CP” (indicating ‘combipack’), the added matter is standard nomenclature used by pharmaceutical companies to describe products. Therefore, the distinguishing feature of Sun Pharma’s mark is the term “ISTAMET”, which, when compared to Glenmark’s “INDAMET”, exhibits striking similarity. As for Mr. Lall’s argument that no monopoly can be claimed on the suffix “MET”, the Court is not dissecting the mark for comparing the suffix selectively. The competing marks “ISTAMET” and “INDAMET” are evidently structurally and phonetically similar, when compared as a whole with different prefix. The only difference lies in two letters of the prefix, with Sun Pharma employing ‘ST’ in ‘ISTA’ and Glenmark using ‘ND’ in ‘INDA’. Therefore, “INDAMET” is deceptively similar to “ISTAMET” both structurally and phonetically. The next question to be addressed is whether such similarity between the two marks is substantial enough to warrant an injunction, given Glenmark’s various defenses concerning the description of goods under Sun Pharma’s registration and the perceived differences between the products associated with the competing marks.”

15. The learned Judge then took note of the salient principles as enunciated in Cadila Healthcare and where the Supreme Court had propounded the rule of added caution which would apply in the case of drugs and pharmaceutical products. Bearing the aforesaid principles in mind, the learned Judge held as follows:
“8. In Cadilla Healthcare (supra), the Court has held that trademarks in relation to pharmaceuticals must be assessed with utmost care and attention, keeping in the mind the potential risk to public health. Thus, scrutiny of deceptive similarity between trademarks for pharmaceutical products is higher as compared to other goods. The Court should not engage in technical gymnastics in an attempt to find some minor differences between conflicting marks. Such matters must be constructed from the point of view of public or consumers and must not ordinarily be construed from the perspective of chemists and pharmacists. Even so, chemists and pharmacists cannot be said to be infallible even though they are trained/ qualified, and thus, confusion and mistakes as to similar marks may arise. Thus, Glenmark’s contention that both drugs are provided to users only on producing appropriate prescriptions of different kinds as opposed to an over-the-counter drug, does not hold weight. The Court is unimpressed with the argument that no confusion is possible as the source is mentioned on packaging. In the opinion of the Court, considering the overall similarity between the two marks, the likelihood of confusion for a buyer cannot be ruled out solely because the packaging is different. The Court is also unimpressed with Mr. Lall’s submission that added matter is sufficient to distinguish the two products. Such a proposition firstly, should not be applied to pharmaceutical products where the Courts apply a stricter approach to gauge the possibility of confusion and do not engage in speculation as to minor differences since ‘drugs are poisons not sweets. Further, considering the potentially dangerous consequences such a proposition cannot be accepted.”

16. The Court ultimately proceeded to hold that the competing marks “ISTAMET” and “INDAMET” were clearly structurally and phonetically similar and merely because Glenmark’s product was to be consumed with the aid of a DPI device, the same would not constitute a justifiable ground to refuse injunction. This, the learned Judge held, since DPI was not found to be an intrinsic part of the drug but merely an accessory and the purchase of which was discretionary. The learned Single Judge also alluded to the likelihood of confusion at the point of purchase irrespective of the mode of administration. The Court in this regard observed as follows:
“13. In evaluating this case, the Court holds that the specificity outlined in Sun Pharma’s registration, which confines their pharmaceutical product to be utilized for diabetes, should not be interpreted narrowly, as Mr. Lall proposes. When it comes to pharmaceutical products, it is crucial to consider the perspective of the end consumer. This viewpoint, often of a person with average intelligence, has consistently been deemed to be the guiding factor by this Court. Therefore, given the similarities between the products, we cannot discount the potential for confusion or misunderstanding when ordinary consumers are faced with similar-looking prescription drugs, even if their therapeutic applications differ significantly. This is particularly relevant in the context of public health, where any ambiguity could potentially lead to harmful consequences.
14. Bearing in mind the established legal principles mentioned earlier, we will now address the various points of differentiation emphasized by Mr. Lall. The suffix “MET” in Sun Pharma’s product “ISTAMET” is an abbreviation derived from the first three letters of “Metformin Hydrochloride”, the active ingredient in the drug. Likewise, the “MET” in Glenmark’s “INDAMET” is based on a different active compound, “Mometasone Furoate”. Although Glenmark has emphasized that the difference in these compounds as a significant point of distinction, however, in the Court’s view, the marked similarity between Glenmark’s and Sun Pharma’s brand names overshadow these differences in composition, due to the shared suffix “MET.” This could cause substantial confusion among consumers suffering from either asthma or diabetes, potentially leading to serious consequences. It is important to note that, in pharmaceuticals, minor differences in composition or formulation can yield significantly varied effects on the body, including potential side effects. It is thus critical that the public is not misled into purchasing a product under the belief that it has a specific composition or formulation, only to discover it contains different active ingredients. A more stringent test must be applied to pharmaceutical products, given their significant impact on public health and safety. Consumers trust these brand names for their respective health conditions and consequently, any ambiguity concerning a drug’s composition or formulation could result in grave health repercussions.”

17. The learned Judge also held against Glenmark based on the adverse effect likely to ensue upon a mistaken consumption of “INDAMET” in place of “ISTAMET” and observed as follows:
“16. Glenmark’s product labeling clearly advises users against ingesting the “INDAMET” capsule in the same manner as an oral tablet, presumably due to associated health risks. As such, Mr. Lall’s assertion that accidental ingestion would result in no harm seems unfounded, and moreover, this assertion is unsupported by any scientific evidence or research. No authoritative report, study, or peer-reviewed publication has been submitted to indicate the potential repercussions of accidental consumption of either party’s medication. In fact, Mr. Lall’s assertion is controverted by Mr. Gupta, who states that in a situation where a person suffering from diabetes accidentally consumes Glenmark’s “INDAMET” drug meant for asthma, blood sugar levels of the patient will increase on account of the molecules of “Indameterol” and “Mometason” present in the drug and also on account of the patient missing out on their actual prescribed dosage of “ISTAMET”. If untreated, damage could occur to the blood vessels and could aggravate the potentiality of heart disease, stroke, kidney disease, vision problem and even nerve problems.

17. As illustrated by Mr. Gupta there is also a second scenario where a person suffering from asthma accidentally takes Sun Pharma’s “ISTAMET” drug which is used to treat diabetes. That, as highlighted by him, can lead to Hypoglycaemia and continuing such dosage would lead to dramatic fall in a person’s blood sugar levels leading to Hypoglycaemic coma which can have varied outcomes including death. Further, considering that the person taking “INSTAMET” is suffering from asthma, he would be miss out on his prescribed dosage of “INDAMET” which may worsen his asthma over time.

18. Thus, the clinical consequence of the accidental consumption of an incorrect drug is a ‘grey area’ and cannot be a point of differentiation for this Court to rule out any possibility of confusion between the two drugs. On the contrary, the scenarios illustrated by counsel underscore the need for a rigorous assessment.”

18. Insofar as the question of estoppel during the process of examination is concerned, the learned Judge held that the question of deceptive similarity is essentially one which is legal in character, and consequently, principles of estoppel would have no application. Proceeding then to evaluate the aspect of balance of convenience, the Court held that undisputedly Sun Pharma had been using the mark “ISTAMET” since 2011, and thus evidently over a considerable period of time and which would necessarily result in market recognition. The Court took into account the fact that Glenmark had launched “INDAMET” only on 16 June 2022, and in the face of an opposition which had already been filed by Sun Pharma on 27 May 2022 against the use of the mark. The Court consequently took the view that Glenmark appeared to have consciously chosen to use the impugned mark despite the existing opposition and the said action being liable to be construed as either “negligence” or a “strategic gamble”. It then bore in consideration the well-established “first in the marketplace” principle to hold in favour of Sun Pharma. On an overall conspectus of the aforesaid, an order of injunction came to be framed in the following terms:
“31. In light of the aforementioned reasons, Sun Pharma has successfully met the criteria required for the issuance of an interim injunction against Glenmark. Therefore, it is hereby ordered that, during the pendency of this suit, Glenmark, including any parties acting on their behalf, are restrained from manufacturing, offering for sale, selling, displaying, advertising, marketing, directly or indirectly, any medicinal/pharmaceutical preparations bearing the Impugned Mark, “INDAMET” or any other mark which is identical/ deceptively similar to Sun Pharma’s registered mark “ISTAMET XR CP” (as enumerated in Table-A above).”

19. Addressing submissions on the appeal, Dr. Singhvi and Mr. Sibal, learned senior counsels, submitted that Sun Pharma was clearly not entitled to interim protection bearing in mind the fact that the suffix “MET” is not liable to be viewed as a source identifier or one over which it could claim a monopoly. Emphasis was laid on the suffix “MET” being common in the pharmaceutical trade and thus liable to be ignored while comparing the two marks. According to learned senior counsels, if the aforesaid aspects were kept in mind, it would be evident that the conclusions arrived at by the learned Single Judge with respect to deceptive similarity are rendered wholly unsustainable.
20. It was further submitted that in light of the judgment rendered by the Court in South India Beverages vs. General Mills11 if “XR CP” were to be excluded in the course of comparison of the two marks, then following identical principles, the common to the trade suffix “MET” was also liable be excluded. This, according to learned senior counsels, would lead one to identifying the essential feature of Sun Pharma’s mark being “ISTA” while that of Glenmark being “INDA” which are ex facie dissimilar.
21. Dr. Singhvi sought to draw sustenance for the aforenoted submissions from the following observations appearing in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. (P) Ltd.12 and where while considering competing marks “DROPOVIT” and “PROTOVIT”, injunction was refused in the following terms:
“8.  In order to decide whether the word “Dropovit” is deceptively similar to the word “Protovit” each of the two words must, therefore, be taken as a whole word. Each of the two words consists of eight letters, the last three letters are common, and in the uncommon part the first two are consonants, the next is the same vowel ‘O’, the next is a consonant and the fifth is again a common vowel ‘O’. The combined effect is to produce an alliteration. The affidavits of the appellant indicate that last three letters “Vit” is a well known common abbreviation used in the pharmaceutical trade to denote vitamin preparations. In his affidavit, dated January 11, 1961 Frank Murdoch, has referred to the existence on the register of about 57 trade marks which have the common suffix “Vit” indicating that the goods are vitamin preparations. It is apparent that the terminal syllable “Vit” in the two marks is both descriptive and common to the trade. If greater regard is paid to the uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the other. The letters ‘D’ and ‘P’ in “Dropovit” and the corresponding letters ‘P’ and ‘T’ in “Protovit” cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view.”
22. Dr. Singhvi also relied upon the observations in Schering Corpn. v. Alkem Laboratories Ltd. 13 to contend that common to trade suffixes should be excluded in the course of comparison of competing marks: 
61. TEMO has been used for TEMOZOLOMIDE by several parties apart from the respondents, namely, Cipla Limited, who use the brand name ‘TEMOSIDE’, Netco Pharma Limited, who use the brand name ‘TEMONET’ and Dabur Pharma Limited, who use the brand name ‘TEMOZEM’. There are a number of other similar marks with the prefix TEM/TEMO for drugs, which are present in the market. The appellants have themselves pointed out that TEM/TEMO is contained as a part of the trademark of a variety of different pharmacological groups, such as (i) TEMSIROLIMUS (an anti-kidney cancer agent); (ii) TEMOPORFIN (a photosensitizing anti-cancer agent like TEMOZOLOMIDE); (iii) TEMOCILLIN (antibiotic); (iv) TEMOCAPRIL (anti-hypertensive). We may also notice that from the documents filed by the appellants it appears that there are various other drugs having the prefix TEM/TEMO such as TEMARIL—trademark for preparations of trimeprazine tartrate; TEMAZEPAM—a benzodiazepine used as a sedative and hypnotic in the treatment of insomnia, administered orally; TEMEFOS-USAN for temephos; TEMEPHOS—an organophosphorous insecticide used as a larvicide for control of mosquitoes and blackflies and as a veterinary ectoparasiticide; TEMODOX—a veterinary growth stimulant; TEMOVATE—trademark for preparations of clobetasol propionate.
62. It has been repeatedly recognized that in the trade of drugs it is a common practice to name a drug on the basis of the name of its active chemical compound or salt, or the disease it seeks to remedy, or the particular organ it is intended to treat. The name of such an ingredient or compound, ailment or organ being in the public domain and of generic nature, which has been used descriptively, cannot be claimed by anyone for use exclusively as only his/her trademark.
63. From the materials produced by the respondent, it is evident that TEM/TEMO have been employed in place of TEMOZOLOMIDE or as abbreviations for certain other medicines. No doubt TEM/TEMO have also been used in place of ‘TEMODAL’ and TEMODAR’. However, there is nothing to suggest that TEM/TEMO mean, and only mean, TEMODAL/TEMODAR and nothing else. Even when TEM/TEMO is used in relation to ‘TEMODAL’ and ‘TEMODAR’, the reference is actually to the chemical compound TEMOZOLOMIDE, which is the active ingredient in ‘TEMODAL’ and ‘TEMODAR’.
64. Consequently, in our view, prima facie the word fragment TEM/TEMO is publici juris and also generic for and descriptive of the chemical compound, TEMOZOLOMIDE, and, therefore, the appellants cannot claim the exclusive right to use thereof. The decision in Astrazeneca (supra) has rightly been held to apply on all fours to the cases in hand.
65. As the appellants have chosen to brand their product with a generic and descriptive prefix ‘TEMO’, any other person entering the market would be entitled to use the said term to identify the product in question. If the appellants were desirous of avoiding such a situation, they should have branded their drug with a unique name instead of a descriptive name [see Rhizome Distilleries P. Ltd. (supra)].
xxxx xxxx xxxx
112. The drugs of the respondents can be bought only against prescriptions from cancer hospitals, institutions and cancer specialists and not otherwise. The appellants have not produced any credible material to show actual confusion or that their product is, in any way, superior to that of the respondents which could be relied upon at this stage of the proceedings.
113. The aforesaid trademarks cannot be deciphered or considered separately i.e. by fragmenting them, but must be taken as a whole. But even if they are taken as a whole, the prefix TEMO used with suffix KEM and GET in the two competing names distinguish and differentiate the products of the appellants from those of the two respondents. When they are taken as a whole, the aforesaid two trademarks of the two respondents cannot be said to be either phonetically or visually or in any manner deceptively similar to the trademarks of the appellants i.e. TEMODAL and TEMODAR.”
23. Reliance was also placed on the judgment of this Court in Astrazeneca UK Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd.14 wherein the following was observed:
“19. Admittedly, ‘Mero’, which is common to both the competing marks, is taken by both the appellants/plaintiffs and the respondent/defendant from the drug ‘Meropenem’, taking the prefix ‘Mero’ which is used as a prefix in both the competing marks. Both the appellants/plaintiffs and the respondent/defendant are marketing the same molecule ‘Meropenem’. Neither the appellants/plaintiffs nor the respondent/defendant can raise any claim for exclusive user of the aforesaid word ‘Meropenem’. Along with the aforesaid generic/common prefix, ‘Mero’, the appellants/plaintiffs have used the syllables ‘nem’, whereas, the respondent/defendant has used the syllable ‘mer’. It is true that the aforesaid words/trade names cannot be deciphered or considered separately, but must be taken as a whole. But even if they are taken as a whole, the prefix ‘Mero’ used with suffix in the two competing names, distinguishes and differentiates the two products. When they are taken as a whole, the aforesaid two trademarks cannot be said to be either phonetically or visually or in any manner deceptively similar to each other.
20. We are informed that there are a number of such other similar names with the prefix ‘hero’ which are in the market. They were also taken notice of by the learned Single Judge while dealing with the injunction application. In the decisions of the Supreme Court and this Court also, it has been clearly held that nobody can claim exclusive right to use any word, abbreviation, or acronym which has become publici juris. In the trade of drugs, it is common practice to name a drug by the name of the organ or ailment which it treats or the main ingredient of the drug. Such an organ ailment or ingredient being publici juris or generic cannot be owned by anyone exclusively for use as a trade mark. In the Division Bench decision of this Court in SBL Limited (supra) it was also held that possibility of deception or confusion is reduced practically to nil in view of the fact that the medicine will be sold on medical prescription and by licensed dealers well versed in the field and having knowledge of medicines. It was further held that the two rival marks, ‘Liv.52’ and ‘LIV-T’, contain a common feature, ‘Liv’ which is not only descriptive, but also publici juris and that a customer will tend to ignore the common feature and will pay more attention to uncommon features i.e. ‘52’ and ‘T’ and that the two do not have such phonetic similarity so as to make it objectionable.
21. In our considered opinion the facts of the said case are almost similar and squarely applicable to the facts of the present case. ‘Meropenem’ is the molecule which is used for treatment of bacterial infections. In that view of the matter, the abbreviation ‘hero’ became a generic term, is publici juris and it is distinctive in nature. Consequently, the appellants/plaintiffs cannot claim exclusive right to the use of ‘hero’ as constituent of any trademark. The possibility of deception or confusion is also reduced practically to nil in view of the fact that the medicine is sold only on prescription by dealers. The common feature in both the competing marks i.e. ‘hero’ is only descriptive and publici juris and, therefore, the customers would tend to ignore the common feature and would pay more attention to the uncommon feature. Even if they are expressed as a whole, the two did not have any phonetic similarity to make it objectionable. There are at least four other registered users of the prefix ‘Mero’ in India whereas the names of 35 companies using ‘Mero’ trademarks, which have been registered or applied for registration, have been furnished in the pleadings. The respondent/defendant advertised its trademark ‘Meromer’ after submitting its application for registration and at that stage, there was no opposition even from the appellants/plaintiffs. The trademark of the respondent/defendant was registered there being no opposition from any quarter, including the appellants/plaintiffs.”
24. Apart from the decisions noticed above, the appellants also relied upon various other judgments which had held that words which are publici juris cannot form the basis for injunctive relief and of those two having been rendered upon actions instituted by Sun Pharma itself. The two decisions which were cited for our consideration were Sun Pharmaceutical Laboratories Vs. Hetero Healthcare Limited15 and Sun Pharmaceutical Laboratories Vs. Intas Pharmaceuticals Ltd.16 Dr. Singhvi also sought to draw sustenance from a list of third-party trademarks employing the words “MET” and which were set out in the shape of a table, which is extracted hereinbelow:
List of 3rd Party ‘MET’ Trademarks
S. No.
Trademark
Purpose & composition
TM Application (if any)
Availability/ Product Listing
MET marks cited in the Plaintiff’s Examination Report
1
INTAMET
–
Registered – Applied
on 30.11.1984
Valid upto 30.11.1994
Pg. 1225/ pdf pg.1234
–
2
VISTAMET
Anti-Hypertensive –
Metoprolol
Abandoned- Applied
on 05.09.2007 Used
since 11.05.2007
Pg. 1227/ pdf pg.1236
1228-1229 pdf pg.
1237-1238
3
ASTAMET
(TMA 136667)
–
Registered (likely to
be removed) – Applied
on 27.06.2005
Valid upto 27.06.2015
Pg. 1231/ pdf pg.1240
–
4
INSTAMET
Anti-diabetic –
GLIMEPIRIDE +
METFORMIN
Registered (likely to be removed)- Applied on 19.11.2008 Used
since 07.07.2007
Valid upto 19.11.2018
Pg. 1232/ pdf pg.1241
1233-1235/ pdf pg.
1242-1245
5
ESTIMET
Anti-diabetic –
METFORMIN
Registered – Applied on 10.12.2009 Used since 26.11.2006
Valid upto 10.12.2029
Pg. 1237/ pdf pg.1246
1238-1240/ pdf pg.
1247-1249
6
ASTAMET
(TMA
2273369)

Refused – Applied on
28.01.2012 Used since
25.12.2010
Pg. 1241/ pdf pg.1250

Substitute of the Plaintiff’s Drug
7
ZITAMET – by Glenmark
Type 2 Diabetes –
SITAGLIPTIN +
METFORMIN
HYDROCHLORIDE
Not filed on record
1275/ pdf pg. 1284
8
JANUMET
Type 2 Diabetes –
SITAGLIPTIN +
METFORMIN
Not filed on record
1282/ pdf pg. 1291
9
SEPAMET-XR
Type 2 Diabetes –
SITAGLIPTIN +
METFORMIN
Not filed on record
1294/ pdf pg. 1303
Other 3rd party MET Trademarks
10
DIAMET
Anti-diabetic –
METFORMIN
Registered (pending
renewal)- Used since
01.06.1995
Valid upto
25/02/2023
Pg. 1306/ pdf pg.1315
1308/ pdf pg. 1317
11
BENCLAMET
Anti-diabetic –
Glibenclamide +
Metformin
Registered- Applied
on 27.11.1997
Valid upto 27/11/2027
Pg. 1320/ pdf pg.1329
1322/ pdf pg. 1331
12
GLUTAMET
Type 2 Diabetes –
METFORMIN
Registered – Applied
on 10.05.2002
Valid upto
10/05/2032
Pg. 1333/ pdf pg.1342
1335/ pdf pg. 1344
13
METAMET
Type 2 Diabetes –
METFORMIN
Registered- Applied
on 15.10.2007
Valid upto
15/10/2027
Pg. 1346/ pdf pg.1355
1348/ pdf. pg.1357
14
SITAMET
Type 2 Diabetes –
SITAGLIPTIN +
METFORMIN
Registered- Applied
on 17.03.2008
Valid upto 17.03.2028
Pg. 1359/ pdf pg.1368
1361/ pdf pg. 1370
15
YAMET
Diabetes –
METFORMIN
HYDROCHLORIDE
+ GLIMEPIRIDE
Registered- Applied
on 05.10.2004
Valid upto 05.10.2024
Pg. 1366/ pdf pg.1375
1368/ pdf pg. 1377
16
ALNAMET
Type 2 diabetes –
GLIMEPIRIDE +
METFORMIN
Registered- Used since 15.02.2010
Valid upto 26.08.2032
Pg. 1374/ pdf pg. 1383
1376/ pdf pg. 1385
17
YOGAMET
Type 2 diabetes –
GLIMEPIRIDE +
METFORMIN
Registered – Applied
on 19.01.2015
Valid upto19.01.2025
Pg. 1387/ pdf pg.1396
1389/ pdf pg. 1398
18
ZAVAMET
Type 2 diabetes -METFORMIN +
VILDAGLIPTIN
Registered- Used since 10.09.2019 Valid upto 10.09.2029
Pg. 1398/ pdf pg. 131407
1400/ pf pg. 1409
19
VIVAMET
Type 2 diabetes –
GLIMEPIRIDE +
METFORMIN
Registered (pending
renewal)- Applied on
12.02.2013
Valid upto 12.02.2023
Pg. 1405/ pdf pg.1414
1407/ pdf pg. 1416
20
VOKANAMET
Type 2 diabetes –
CANAGLIFLOZIN
+
METFORMIN
Registered- Applied
on 15.01.2013
Valid upto 15.01.2033
Pg. 1412/ pdf pg.1421
1414/ pdf pg. 1423

In view of the aforesaid, it was Dr. Singhvi’s submission that the impugned judgment is wholly perverse when it holds that there is a striking similarity between the two marks.
25. It was then submitted that in the course of examination of the application made by the appellant for registration of “INDAMET” by the Registrar, no conflicting marks were cited. According to learned senior counsel, this is liable to be read as the Registrar not finding the appellant’s mark “INDAMET” to be similar to those of Sun Pharma, namely, “ISTAMET”/ “ISTAMET XR CP”.
26. Insofar as infringement analysis is concerned, it was the submission of Dr. Singhvi that Sun Pharma’s mark “ISTAMET XR CP” is registered only with respect to a limited specification of goods being “Pharmaceutical Preparations for treatment and prevention of Diabetes”, and is further disclaimed by the following restriction- “the mark to be read as a whole”. According to Dr. Singhvi, where marks are not identical, the test of deceptive similarity in case of infringement would be the same as those employed while testing a passing-off action. Reliance in this respect was placed upon the decision in M/s Gufic Ltd. & Anr. vs Clinique Laboratories LLC & Anr.17 and to the following passage as appearing therein:
“22. The following principles can be culled out from the aforesaid decisions:-
1. The test of deceptive similarity in the case of infringement is the same as in a passing off action, where the marks are not identical;
2. The question has to be approached from the point of view of a man with average intelligence and imperfect recollection;
3. In comparing the marks, it is the overall structural and phonetic similarity of the two marks that is to be seen and not by splitting them into their component parts and to consider the etymological meaning thereof;
4. The trademark is the whole thing – the whole word has to be considered; and
5. In comparing the two marks, it is also to be seen whether they both convey the same idea – (test of commonness of the idea between the two marks).”

27. Proceeding then to the question of likelihood of confusion, Mr. Sibal contended that the test to be deployed is that of a person of average intelligence and imperfect recollection. When tested on that anvil, Mr. Sibal contended, it would be evident that no individual would be misled into purchasing drugs meant for chronic diseases such as regulation of diabetes and treatment of asthma. According to learned senior counsel, in cases where the end consumer is habitually used to taking a daily dose of specific strength as prescribed by a medical practitioner and is familiar with the manner and mode of administration of the drug, there would be no likelihood of confusion and that in any case the possibility of confusion would clearly stand diminished.
28. Mr. Sibal also sought to draw strength from the fact that while Sun Pharma’s drug was placed in Schedule ‘G’, Glenmark’s drug “INDAMET” stands placed in Schedule “H”, and thus cannot be procured over-the-counter except when the drug is sought to be purchased on the basis of a prescription. It was contended in this respect that even in the event of an over-the-counter sale, a chemist would not be able to dispense Sun Pharma’s drug “ISTAMET” or for that matter that of the appellant’s “INDAMET” without reference to the specified strength.
29. Mr. Sibal further submitted that one would also have to bear in consideration the striking differences in trade dress. These were sought to be explained by reference to the following comparative chart:
Particulars
Respondent/ Plaintiff’s mark – “ISTAMET XR CP”/ “ISTAMET”
Appellant/ Defendant’s mark – ‘INDAMET”
Packaging

Represented both in English and Devnagri script for ease of reference
Composition
Sitagliptin Phosphate (50mg)
+ METformin Hydrochloride
(500/1000 mg) TABLET
INDAcaterol acetate ( 150 meg) + MoMETasone furoate (80/160/320 meg) CAPSULE
Ailment
Type 2 Diabetes
Asthma
Actively advertised as an Asthma Treating Drug administered via an Inhaler
Administration
Ingested Orally
Capsule containing Dry Powder for Inhalation – To be inhaled through a Dry Powder Inhaler like a Rotahaler –

MRP
100 mg Variant Rs.145/-
160 mcg Variant Rs.399/-
Prescription
Prescribed by a General Practitioner/ Endocrinologist
Always prescribed as T. ISTAMET 50/500mg or TAB. ISTAMET
T. stands for tablets
Prescribed by Pulmonologist
Always prescribed as DPI R/C INDAMET 320mcg
DPI INDAMET 160 mcg
R/c INDAMET 80mcg for first time user along with inhaler device.
Prescribed always for first time users with Instahaler/ Rotahaler or other similar device
Method of intake
Oral solid dosage Tablet to be swallowed up with water
Through Inhaler Device to use a Dry Powder Inhaler, remove the inhaler cap, if there is one. Add or load a capsule of medicine as directed by your health care provider.
Tilt your head back a little, and breathe out slowly and completely.
Place the inhaler’s mouthpiece in your mouth. Inhale quickly and deeply through your mouth for 2 or 3 seconds.

30. In support of the aforenoted submissions, Mr. Sibal also relied upon the decision of our Court in Sun Pharmaceutical Laboratories Ltd. vs. Hetero Healthcare Ltd & Another wherein the following was observed:
“35. In our opinion, the judgment and the ratio laid down in Schering Corporation v. Alkem Laboratories Ltd. (supra), squarely applies to the facts of the present case. The appellant, in the present case, cannot be allowed to monopolize the INN ‘LETROZOLE’. The mark, ‘LETROZ’, is not similar to the trademark ‘LETERO’ merely because both the parties have adopted the initial letters (SUN adopted the first six and HETERO adopted the first three) of the INN ‘LETROZOLE’. It is apparent that both SUN and HETERO are using their marks, which are derived from the INN ‘LETROZOLE’, which is descriptive of the active ingredient of the drug, that is, ‘LETROZOLE’.
36. In the present case, there is also a marked difference in the price of both the products being sold by SUN and HETERO. SUN is selling its product at Rs. 187.80/- and HETERO is selling it for Rs. 60/-.
37. The learned Commercial Court found that the trademarks in question were not similar. We concur with the prima facie view of the learned Commercial Court. Prima facie, there is little possibility of confusion or deception in the mind of the purchaser of the drug.
38. In the case of Panacea Biotec Ltd. v. Recon Ltd., 1996 SCC OnLine Del 508, the plaintiff was using the trademark ‘NIMULID’ and had filed a suit for injunction against the defendant for using the mark ‘REMULIDE’ in relation to the same medicine with the API being ‘NIMESULIDE. This Court held that when the name is derived or coined from the name of the principal ingredient being used in the manufacture of the drug, no distinctiveness or exclusiveness can be claimed by the manufacturer. The said decision is applicable to the facts of this case as well; the mark ‘LETROZ’ is nothing but a short name of the active ingredient ‘LETROZOLE’.
39. Much reliance has been placed by the appellant on the judgment passed by Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra). In our opinion, the ratio laid down does not apply to facts of the present case. In the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra), not only the names of the manufacturers were same being two companies which were formed after restructuring of the erstwhile parent company Cadila Laboratories, but their drugs administered for malaria also had similar marks, that are, ‘FALCITAB’ and ‘FALCIGO’. Both parties in the said case were using the name ‘CADILA’, as a corporate name and were selling the drug for the treatment of falciparum malaria under the respective trademarks.
40. It is settled law that in case of an action for passing off, the similarity between the competing marks is to be seen along with the fact whether there is a likelihood of deception or causing confusion. The Supreme Court, in the facts of the case, held that the products being sold by the parties will be purchased by both villagers and townsfolk, literate as well as illiterate, and the question has to be approached from the point of view of ‘a man of average intelligence and imperfect recollection’. The Court held that the purchaser of goods in India cannot be equated with the purchaser of goods in England. The Court found that the drugs have a marked difference in their observations with completely different side effects and therefore, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have disastrous results. The Court further held that the confusion is more likely in such cases and an incorrect intake of the medicine may even result in loss of life or other serious health problems. In our opinion, the judgment relied upon, is not applicable to the facts of the present case.”
31. Learned senior counsel then sought to highlight the aspect of prosecution estoppel and referred to Sun Pharma’s reply as submitted in the course of examination of the application relating to “ISTAMET XR CP”. It was sought to be underlined that as would be evident from a reading of the response submitted by Sun Pharma, and which appears at page 545 of our record, the prior cited mark “INTAMET” was sought to be explained away with it being asserted that it was visually, structurally or phonetically dissimilar to the mark applied for. According to learned senior counsel, it is not permissible for Sun Pharma to disavow the stand that was taken by its predecessor when it came to the mark “INTAMET”. According to the appellant, the respondent also appears to have taken a contradictory stand with respect to the device mark registration in respect of “”. This was sought to be highlighted in the backdrop of the response of Sun Pharma when it sought to distinguish prior cited marks, namely, “ASTAMET”, “INSTAMET” and “ESTIMET”.
32. Turning then to the question of balance of convenience, Mr. Sibal submitted that from the time of its launch on 16 June 2022, “INDAMET” had achieved a sales turnover of more than INR 3.89 crores and, therefore, the said factor clearly operated in favour of the appellant.
33. Appearing for Sun Pharma, Mr. Rohatgi and Mr. Mehta, learned senior counsels, addressed the following submissions. Learned senior counsels firstly and at the outset submitted that the appeal being directed against an order granting interim injunction and thus representing a decision of the learned Single Judge to grant discretionary relief based upon a prima facie evaluation of the facts as placed is not liable to be interfered with merely because the appellate court be of the opinion that another view was possible. It was their submission that as is well-settled, an appellate court would desist from interfering with the exercise of discretion granting or refusing to grant injunctive reliefs unless it be shown that the view as expressed suffers from manifest perversity or illegality. Reliance in this regard was placed on the celebrated decision of the Supreme Court in Wander Ltd. vs. Antox India18 and where the following observations were made:
“14. The appeal before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court’s exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph [(1960) 3 SCR 713 : AIR 1960 SC 1156] : (SCR 721)
“… These principles are well established, but as has been observed by Viscount Simon in Charles Osenton & Co. v. Jhanaton [1942 AC 130] ‘…the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case’.”
The appellate judgment does not seem to defer to this principle.”

34. Learned senior counsels also contended that in case of infringement, injunction must follow. It was in this respect submitted that undisputedly the appellant had no existing trademark registration. It was thus contended that the use and adoption of the impugned mark by the appellant clearly amounts to infringement under Sections 29(1) & (2) of the Act and thus the learned Single Judge was justified in granting injunctive relief. Reliance in this respect was placed on the following passages as appearing in the decision of the Court in Midas Hygiene vs Sudhir Bhatia19.
“5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.”
35. It was then submitted that Glenmark had clearly failed to establish an honest adoption bearing in mind the admitted position which emerges from the record and which would evidence the mark having been adopted after the opposition had been filed by Sun Pharma on 27 May 2022. Despite the above, learned senior counsels submitted, the appellant chose to launch the product with the impugned mark on 16 June 2022 and thus at its own peril and in furtherance of it apparently having decided to take a calculated gamble and risk. According to Mr. Rohatgi and Mr. Mehta, the adoption of such a course would fortify the view as taken by the learned Single Judge. Learned senior counsels in this respect drew our attention to the following observations as made by the Bombay High Court in Bal Pharma vs. Centaur Lab20:
“8. Then we turn to the question of delay and acquiescence. Mr. Tulzapurkar, learned Counsel appearing for the Respondent cites the judgment of the Supreme Court in Power Control Appliances v. Sumeet Machines Pvt Ltd., (1994) 2 SCC 448 wherein the Supreme Court approvingly referred to the judgment of the Appeal Court in England in Electrolux LD v. Electrix and quoted a passage therefrom in paragraph 34 of its judgment. Our attention was also drawn to the judgment in Electrolux itself. Reference to the judgment in Electrolux shows that there is no hard and fast rule that delay per se would defeat an application for interlocutory injunction. The judgment indicates that in a situation where the defendant to an action has been using the mark, even if concurrently, without making himself aware of the fact as to whether the same mark is the subject-matter of the registration and belongs to another person, the first person cannot be heard to complain for he has been using it negligently inasmuch as he has not taken the elementary precaution of making himself aware by looking at the public record of Registrar as to whether the mark in question is the property of another. If, however, he had taken search and, knowing full well that the mark was the property of another person, continues to use the mark, then he runs the risk of a registered proprietor challenging his action for infringement and merely because it is done at a subsequent stage, he cannot be heard to complain on the ground of delay. Further discussion in the judgment shows that in order to deny an interlocutory injunction, the delay must be such as to have induced the defendant or at least to have lulled him into a false sense of security to continue to use the trade mark in the belief that he was the monarch of all he surveyed. In our judgment, such are not the circumstances here. We are not satisfied from the record that a search was taken of the registry by the Appellant to assure itself that there was no other person who owned the mark “MICRODINE”. Assuming that the search was taken, and the Appellant has done it consciously, then the Appellant has to thank itself for having gambled by investing large amounts in a risky venture. Either way, we do not think that the defence can succeed, at this stage, at least.”

36. Learned senior counsels argued that Sun Pharma had been able to establish the existence of a prima facie case as well as balance of convenience and consequently if the learned Single Judge had refused to grant injunction it would have suffered irreparable loss and damage. They drew our attention to the following passages from the judgment impugned before us:
“25. The balance of convenience unequivocally lies in favour of Sun Pharma in this case. Sun Pharma has been utilizing the mark “ISTAMET” since 2011, establishing a considerable period of usage and market recognition. In contrast, Glenmark launched their product under the “INDAMET” mark quite recently, on 16th June, 2022. Significantly, this initiation occurred in the face of an opposition already filed against the use of the mark on 27th May, 2022. This scenario strongly suggests that Glenmark consciously chose to use the Impugned Mark despite the existing opposition, thus accepting the associated risks. This action can be construed as either negligence or a strategic gamble on Glenmark’s part. In either case, it does not situate the balance of convenience in their favour.
26. Additionally, the well-established principle that ‘first in the marketplace’ holds the right, applies here, favoring Sun Pharma. They have been in the market with their mark for over a decade, building consumer recognition and goodwill that Glenmark surely cannot claim to have achieved in such a short span of time. Glenmark’s decision to proceed with the Impugned Mark despite the pending opposition demonstrates their willingness to risk potential legal consequences. Such disregard for established opposition cannot serve as a basis to claim the balance of convenience in their favour.
27. Glenmark also avers that the correspondences in respect of the Merck’s cease-and-desist notice prior to the institution of the suit, were concealed. Sun Pharma states that the cause of action pleaded in the present suit arose on 27th May, 2022, when the opposition was filed against the Impugned Mark, which is prior to the date of issue of cease and desist notice. In the opinion of the Court, there has been no concealment or non-disclosure of any material and essential facts to deny the discretionary and equitable remedy on injunction. To the extent necessary, Sun Pharma’s pleadings make a complete disclosure of the facts relating to the use of the competing marks by the parties, which is the subject matter of the suit.
28. Given these considerations, the balance of convenience distinctly favours the Plaintiff, Sun Pharma, thus warranting the issuance of an injunction. Furthermore, if an injunction is not granted, Sun Pharma may suffer an irreparable loss and damage. The deceptive similarity of the marks, coupled with Glenmark’s recent market entry with a strikingly similar mark, could potentially lead to significant loss of business for Sun Pharma. More critically, it may damage Sun Pharma’s long-built reputation and goodwill among consumers, who may inadvertently associate the quality and effects of Glenmark’s product with Sun Pharma’s product, due to the deceptive similarity in their marks. This reputational damage is intangible and often impossible to fully quantify or rectify, thereby characterizing it as irreparable harm. Furthermore, the potential health risks for consumers due to confusion between the two products adds a heightened element of public interest to this case. Therefore, in the interest of protecting Sun Pharma from such irreparable harm, and to safeguard public health, it is crucial that an injunction is granted in this case.”

37. Assailing the stand which was taken in the appeal, Mr. Rohatgi submitted that courts must proceed with added circumspection when it comes to medicinal products. It was submitted that merely because the competing medical products are scheduled drugs and aimed at treating different ailments or contemplating different forms of administration, would not constitute a sufficient or safe basis for answering the question of confusion. Learned senior counsels laid stress on precedents having consistently held that in the case of drugs the threshold of confusion is comparatively lower and the test of deceptive similarity more stringent. Mr. Rohatgi and Mr. Mehta commended the following passages from Cadila Healthcare for our consideration:
“28. On applying the principles as above, the finding was recorded as follows:
“The respondent applied for registration of the mark ‘Gluvita’ used with reference to biscuits manufactured by him. The appellant who had been using the registered mark, ‘Glucovita’ with reference to his glucose with vitamins opposed the application under Section 8(a). It was established that the appellants trade mark had acquired a reputation among the buying public.
Held applying the above tests that the commodities concerned were no connected as to make confusion or deception likely in view of the similarity of the two trade marks. Apart from the syllable ‘co’ in the appellant’s mark, the two marks were identical. That syllable was not such as would enable the buyers in our country to distinguish the one mark from the other. Hence the respondents’ mark could not be registered.”
29. In a case of Ruston & Honby Ltd. v. Z. Engineering Co., (1969) 2 SCC 727 : AIR 1970 SC 1649 the dispute was between ‘Rustam India’ and ‘Ruston’. The plaintiff had its registered trade mark in the name of ‘Ruston’ whereas the defendant started its product in the name of ‘Rustam India’.
30. The High Court had held in the said matter that there was an infringement of the trade mark of the plaintiff committed by the defendant. However, it was also observed by the High Court that the word ‘India’ as a suffix to Rustom was a sufficient warning to the purchaser and, therefore, the defendant could be allowed to use the combination. The plaintiff had preferred appeal by Special Leave to the Hon’ble Supreme Court. No appeal was filed by the defendant against the finding that use of word ‘Rustam’ constituted infringement.
31. The Hon’ble Supreme Court found that in view of the aforesaid fact, when there, was no appeal preferred by the defendant against the judgement of the High Court, that finding could not be challenged in the Supreme Court. The Hon’ble Supreme Court also found that if the defendant’s trade mark was deceptively similar to that of the plaintiff, the fact that the word ‘INDIA’ was added to the defendant’s trade mark, was of no consequence and the plaintiff was entitled to succeed in its action for infringement of its trade mark.
32. It has also been observed that the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing-off action.
33. Therefore, the Hon’ble Supreme Court allowed the appeal of the appellant and the respondent was prevented by a permanent injunction from infringing the plaintiffs trade mark ‘RUSTON’ and from using it in connection with the engines, machinery and accessories manufactured and sold by it under the trade mark of ‘Rustam’ or ‘Rustam India’.
34. It is to be considered here that the Hon’ble Supreme Court has observed in the said decision that in the given set of facts the test of infringement is the same as for passing off action. It is also required to be considered that in the said matter the defendant had not filed any appeal challenging the finding of the High Court to the effect that there was a deceptive resemblance between the word ‘Ruston’ and the word ‘Rustam’ and, therefore, the use of the have word ‘Rustam’ constituted infringement of plaintiffs trade mark ‘Ruston’. The Hon’ble Supreme Court has clearly observed that the said finding has not been challenged and therefore the Supreme Court should decide the matter further on the strength of the finding of the High Court.
35. Then there is a decision of Reports of Patent Design and Trade Mark Cases. It was a de