The Delhi High Court in a recent case namely, Sun Pharma Laboratories Ltd. v. Ajanta Pharma Ltd. wherein the Court addressed the issue “Is the test for infringement and passing off for nutraceutical products the same as the test applicable for pharmaceuticals?”
Important Take Away from the Case:
- 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.
- That both Pharmaceuticals and nutraceuticals are used in respect of diseases and disorders. They are both meant to address specific ailment
- 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 facts of the instant case covers a dispute between the Plaintiff i.e. Sun Pharma Laboratories Ltd. and the Defendant i.e. Ajanta Pharma Ltd. with respect to two products used by patients of age related dimness of vision and diabetic retinopathy.
- These impugned products are sold under the trade marks ‘GLOEYE’ and ‘GLOTAB’ wherein the both are ocular medicines. The Plaintiff owns the mark ‘GLOEYE’, which was registered in class 05 since July 25, 2005 and Defendant’s mark ‘GLOTAB’ was registered on January 14, 2011.
- The Defendant first started to use the ‘GLOTAB’ mark in 2013, and the Plaintiff applied for an interim injunction the following year i.e. 2014.
While alleging likelihood of confusion between the products sold under the mark ‘GLOEYE’ and those sold under ‘GLOTAB’, the Plaintiff contented that although the products under the mark ‘GLOEYE’ are nutraceuticals, they should be treated the same as pharmaceuticals when being assessed for passing off.
The Plaintiff further relied on the landmark judgment of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., where in the case of products which are used to treat any ailment, even if they are not pharmaceuticals, the test laid down in the said landmark judgment ought to be applied, as both are medicinal by their very nature.
The Defendants while denying the Plaintiff’s submission argued that tests as laid down in the Cadila case may not be fully applicable in the context of nutritional food supplements and nutraceuticals and that some degree of confusion can be tolerated.
The High Court of Delhi while rendering it’s decision in the case elaborately discussed the provisions under the Food Safety and Standards Act, 2006, particularly Section 22 of the Act and FSS Regulations, 2011 to infer that as these products contain “plant extracts” they are “nutraceuticals” under Section 22 of the FSS Act.
The Court in the case also made reference to the landmark Cadila case and listed down the following important tests which are as under –
- In the case of drugs, a strict test needs to be applied for determining confusion and deception;
- If the products have a difference in composition with completely different side effects, a stricter test should be applied;
- Greater vigilance is required where the products are meant to cure the same ailments, but the compositions are different;
- Merely because drugs are sold under prescription is not sufficient protection against confusion;
- The prevalent social conditions and linguistic barriers require stricter measures to be taken, to prevent confusion arising from similarity of marks among medicinal products;
- Physicians and pharmacists are not immune to mistakes;
- A lesser degree of proof to establish confusing similarity would be required in the case of medicinal products as against non- medicinal products;
- The varying profiles of patients, especially the elderly, illiterate persons and children need to be kept in mind;
- In view of public health issues involved in the case of medicines, stringent measures ought to be adopted.”
While passing an order in favour of the Plaintiff, the Court held that “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”. Moreover, the marks themselves are “deceptively similar” and the suffixes ‘EYE’ and ‘TAB’ do not sufficiently distinguish them. The Court awarded an interim injunction to the Plaintiff, under which the Defendant is prohibited from selling any medicinal or otherwise consumable products for treating illnesses under the ‘GLOTAB’ mark.
 CS (COMM) 622/2018 & I.A. 12663/2014.
 (2001) 5 SCC 73