In Sun Pharma Laboratories Ltd. v. Ajanta Pharma Ltd.CS (COMM) 622/2018, the Delhi High Court, vide its judgment dated May 10, 2019, has held that the test to determine infringement and passing off for nutraceutical products is the same as the test applicable for pharmaceuticals, and granted an interim injunction to the Plaintiff against the Defendant’s use of the trademark GLOTAB.
The Plaintiff (Sun Pharma Laboratories Ltd.) initiated the instant suit before the Delhi High Court for passing-off and infringement of its registered trademark GLOEYE, under which it sells a nutraceutical product used for age-related dimness of vision and diabetic retinopathy. The Plaintiff’s main submission was that the Defendant’s product under a deceptively similar trademark GLOTAB, also being a nutraceutical product consumed for the same ailment, may be confused for its product under the trademark GLOEYE. It was further submitted that nutraceuticals being medical products, are to be treated on par with pharmaceuticals and hence, a stricter test for determining trademark infringement and passing-off as laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 for pharmaceuticals must be applied to nutraceuticals as well.
The Defendant contended that the products under both the marks GLOEYE and GLOTAB are prescription drugs, and accordingly there shall arise no likelihood of confusion. The Defendant further submitted that that the prefix ‘GLO’ is common to the trade and the two marks when compared as a whole are not deceptively similar.
Upon a careful consideration of law and facts, the Court observed that nutraceuticals, like pharmaceuticals, are highly regulated products which cannot be manufactured without a license. The Court perused various factors (viz. licences, physical and physiological factors, diseases and disorders) to conclude that the nutritional food supplements and nutraceuticals are akin to medicines and pharmaceutical preparations. Accordingly, the Court held that ‘…the mere fact that these products are nutritional food supplements or nutraceuticals and are not pharmaceuticals in the strict sense is not convincing enough for 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…’