Bombay High Court Blocks Sale Of Diabetes Drug ELGIMET For Similarity To GLIMET's Mark

The Bombay High Court on Tuesday restrained the use of the diabetes drug mark ELGIMET, finding it deceptively similar to the registered mark GLIMET, and confirmed an interim injunction against its sale and manufacture. A single bench of Justice Sharmila U Deshmukh, observed that “GLIMET” and “ELGIMET” were phonetically and structurally similar and that an average consumer with imperfect recollection could easily confuse the two. The dispute arose when Laboratories Griffon Pvt. Ltd., maker of GLIMET and GLIMET DS since the early 1990s, discovered ELGIMET products being sold online in June 2024. An ad-interim injunction was initially granted in September 2024. Adwin Pharma, which manufactures ELGIMET, argued that the marks were neither visually nor phonetically similar, that price differences ruled out confusion, and that GLIMET could not be monopolised because it was derived from pharmaceutical ingredient names. It further contended that its adoption of ELGIMET was honest, as it was linked to its company name, Elcliff. The court rejected these arguments, citing Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., and emphasised that confusion in pharmaceutical goods warrants stricter scrutiny. It noted that prescription-based sales alone do not eliminate the possibility of confusion.It observed, “The Plaintiffs being in the pharmaceutical industry since the year 1992, the Defendant No 2 ought to have been aware of the Plaintiff's registered trade mark being in existence and avoided adoption of deceptively similar trade mark. The mere existence of slightest probability of confusion in the case of medicinal products require that the use of the product be restrained.”, The court also highlighted that Griffon's trademarks were registered in Part A of the old Trade and Merchandise Marks Act, 1958, indicating distinctiveness. It rejected the claim that GLIMET was descriptive of drug components, holding that while no exclusivity could be claimed over names of individual ingredients, exclusivity could be claimed over the coined combination “GLIMET.” The court further observed that Adwin Pharma had produced no evidence of substantial investment, actual sales, or prior use of the impugned mark. On the passing-off claim, it held that while Griffon had goodwill and reputation, no prima facie case of misrepresentation had been made, and therefore interim relief for passing off was declined. The ad-interim injunction was confirmed, restraining Adwin Pharma and associated entities from using ELGIMET or any mark identical or deceptively similar to GLIMET or GLIMET DS. Case Title: Laboratories Griffon Pvt. Ltd. and Anr v. Adwin Pharma and Anr. Case Number: IA (L)-27480-2024 IN COMMERCIAL IP SUIT NO. 225 OF 2024 For the Plaintiff: Advocate Rashmin Khandekar, Archita Gharat, Kiran Mehta instructed by Advocate Kiran J Mehta For the Defendant: Advocate Bhavi Gada instructed by Advocates Pooja Jain for Defendant Nos. 1, 1A and 1B (through VC); Advocates Rajiv Gupta instructed by Advocates Nisha Kaba, Abhijit Singh, Shivani Upadhyay for Defendant No. 2Click Here To Read/Download The Order

Bombay High Court Blocks Sale Of Diabetes Drug ELGIMET For Similarity To GLIMET's Mark

Ayushi Shukla

Tags