Test for infringement, passing off for nutraceuticals same as pharmaceutical products, Delhi HC

Test for infringement, passing off for nutraceuticals same as pharmaceutical products, Delhi HC

Aditi Singh

The Delhi High Court has held that the test for infringement and passing off applicable to pharmaceutical products would be applicable to nutraceuticals as well.

The mere fact that these products are nutraceuticals or nutritional food supplements is not convincing enough for adoption of a less stringent test for infringement and passing off, the Court has observed.

The order was passed by  a Single Judge Bench of Justice Prathiba M Singh in a suit pertaining to the use of the trademarks GLOEYE and GLOTAB, by the plaintiff and defendant respectively.

Both the products were ocular medicines used to help with age-related dimness of vision and diabetic retinopathy. Since they contained plant extracts, they were termed as nutraceuticals under Section 22 of the Food Safety and Standards Act, 2006.

The plaintiff, Sun Pharma Laboratories Ltd, commenced the use of and registered the mark GLOEYE in July 2005.

The defendant, Ajanta Pharma, also applied for the mark in July 2008 on a proposed to be used basis and it was eventually registered in January 2011. It started the use of the mark in 2013.

Since both the trademarks were registered, the Court restricted the scope of the suit initiated by Sun Pharma to a passing off action.

After establishing clear prior user of the mark GLOEYE by at least 8 years, Sun Pharma argued that since both the products were nutritional supplements and ‘GLO’ is the main prefix, chances of deception and confusion were extremely high. It thus prayed for the grant of an interim injunction against Ajanta Pharma.

Ajanta, on the other hand, argued that both products were prescription drugs and that the prefix ‘GLO’ was common to the trade. There were no chances of deception or confusion and even the trademark authorities did not consider GLOTAB and GLOEYE to be similar, it was stated.

It further argued that the test laid down by the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2013) was not fully applicable in the context of nutritional food supplements and nutraceuticals, and that some degree of confusion could be tolerated.

The Court observed that the manner of approval of nutraceuticals and nutritional food supplements under the FSSAI regime was highly regulated. The product, as well as its packaging, labels, content of the labels, specific disclaimers, and conditions had to be approved by the Food Authority. It further noted that they were consumed usually on the advice of medical practitioners.

The Court thus concluded that nutritional food supplements and nutraceuticals were akin to medicines and pharmaceutical preparations. It is a well-settled legal position in respect of medicines and pharmaceuticals that deception and confusion need to be avoided, it added.

Therefore, it held that the mere fact that nutraceuticals are nutritional food supplements and are not pharmaceuticals in the strict sense is not convincing enough for the adoption of a less stringent test.

Pharmaceuticals and nutraceuticals are used in respect of diseases and disorders. They are both meant to address specific ailments. Both these products are meant to improve the health of patients. The mere fact that nutraceuticals are termed so, as they contain ingredients derived from plants, does not mean that a lenient test needs to be adopted in respect of these products. The effects of the products and the consumers of the products all being similar in nature, the test applicable to pharmaceutical products would be applicable even to nutraceuticals.

It was thus held that the principles laid down in Cadila in respect of medicines and pharmaceuticals would equally apply to nutraceuticals and nutritional supplements.

While analyzing the facts of the present case, the Court noted that although both products contained bilberry extracts and are nutritional supplements, their composition was not identical. The manner in which they had to be consumed and their side effects were also not identical. While GLOEYE could be used for allergy, GLOTAB was specifically not to be taken in case of allergic reactions and allergies.

Clarifying that in a passing off action, the test is of ‘likelihood of confusion’, the  Court stated that the chances of GLOTAB being prescribed in place of GLOEYE or vice-versa, was quite high and could not be eliminated.

Hence, applying the principles laid down in Cadila, the Court ordered that Sun Pharma was entitled to an interim injunction with respect to Ajanta’s trademark GLOTAB or any other mark identical or deceptively similar to GLOEYE.

It nonetheless allowed the defendant to sell the existing stock of its products and packaging under the mark GLOTAB subject to filing quarterly accounts of the same.

Sun Pharma was represented by Advocates Kapil Wadhwa, Devyati Nath and Deepika Pokharia.

Ajanta Pharma was represented by Senior Advocate Sandeep Sethi with Advocates Jayant Mehta, Afzal B Khan and Suhrita Majundar.

Read the order:

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