Case Note & Summary
The Plaintiff, Glenmark Pharmaceuticals Ltd., is engaged in manufacturing and sale of pharmaceutical preparations. It adopted the trademark 'SACU-V' in early 2021 for a drug containing Sacubitril and Valsartan (24 mg and 26 mg) used for treating heart failure. The Plaintiff obtained registration for the word mark 'SACU-V' in Class 5 (No. 4897935 dated 10 March 2021) and launched the product in January 2023, generating sales and goodwill. In April 2023, the Plaintiff discovered that the Defendants were selling a pharmaceutical product under the mark 'SACV' with the same chemical composition. The Plaintiff issued a cease-and-desist notice on 6 May 2023, but the Defendants did not reply. The Defendants' product temporarily disappeared from the market but reappeared in January 2024. The Plaintiff filed the suit and interim application on 20 March 2024. The Defendant No.2 filed an affidavit giving an undertaking not to manufacture, market, sell, or deal with any product using 'SACV', 'ALTEUS SACV', or 'SACU-V'. The Defendant No.1 initially claimed in its reply that 'SACV' was an anti-HIV drug (Saquinavir), but during oral arguments, it admitted that its product actually contained Sacubitril and Valsartan, the same composition as the Plaintiff's product. The Court found that the Plaintiff had made out a prima facie case of trademark infringement and passing off, as the marks were deceptively similar and the goods were identical. The balance of convenience was in favor of the Plaintiff, and irreparable loss would be caused if the injunction was not granted. The Court granted an interim injunction restraining the Defendants from using the impugned marks, noting the undertaking of Defendant No.2.
Headnote
A) Trade Marks - Infringement - Registered Trademark - Section 29 of the Trade Marks Act, 1999 - The Plaintiff, owner of registered trademark 'SACU-V' in Class 5 for a heart failure drug, sought interim injunction against Defendant's use of 'SACV' for similar pharmaceutical products. The Court held that the marks are deceptively similar, and the Plaintiff made out a prima facie case for infringement. (Paras 1-10) B) Trade Marks - Passing Off - Deceptive Similarity - Section 134 of the Trade Marks Act, 1999 - The Plaintiff demonstrated goodwill and reputation in 'SACU-V' through sales and promotion. The Defendant's adoption of 'SACV' for identical composition drugs (Sacubitril and Valsartan) was likely to cause confusion. The Court held that balance of convenience favored the Plaintiff. (Paras 3-7) C) Civil Procedure - Interim Injunction - Undertaking - The Defendant No.2 gave an undertaking not to use the impugned marks. The Court accepted the undertaking and granted injunction against Defendant No.1. (Paras 8-10)
Issue of Consideration
Whether the Plaintiff is entitled to an interim injunction restraining the Defendants from infringing its registered trademark 'SACU-V' by using the impugned mark 'SACV'/'ALTEUS SACV' for pharmaceutical preparations.
Final Decision
The Court allowed the Interim Application and granted an interim injunction restraining the Defendants from infringing the Plaintiff's registered trademark 'SACU-V' by using the impugned mark 'SACV'/'ALTEUS SACV' or any deceptively similar mark, and from passing off their goods as those of the Plaintiff. The Defendant No.2's undertaking was accepted.
Law Points
- Trademark infringement
- Passing off
- Deceptive similarity
- Pharmaceutical trademarks
- Interim injunction
- Prima facie case
- Balance of convenience
- Irreparable loss
