FENTEL injunction confirmed by Delhi District Court

In GlaxoSmithKline Pharmaceuticals Ltd v Goyal (Suit 365/03, IA 7017/03 and 9293/03, September 15 2004), the Delhi High Court has confirmed an interim injunction preventing the defendants from using the mark FENTEL for a pharmaceutical product.

GlaxoSmithKline Pharmaceuticals Ltd and SmithKline & French Laboratories Ltd (the plaintiffs) sued Naval Kishore Goyal, Harish Goyal and M/s Faith Pharmaceutical Pvt Ltd (defendants) for passing off and trademark infringement. The plaintiffs claimed that the defendants' use of the mark FENTEL infringed their rights in the registered pharmaceutical mark ZENTEL. The Delhi High Court granted an ex parte injunction in favour of the plaintiffs while admitting the suit. In response, the defendants filed an application requesting that the injunction be vacated.

When the application came to court, the plaintiffs argued that:

• ZENTEL was an invented word and possessed a highly distinctive character;
  
  
• they had registered the mark in India in May 1980;
  
  
• the trademark had been in use in India since 1986 and the sales volumes for the product sold under the mark were significant;
  
  
• they had become aware of the defendants' use of the mark FENTEL in the first quarter of 2003; and
  
  
• since the case involved a pharmaceutical product the balance of convenience favoured the plaintiffs and the interim injunction ought to be confirmed.

For their part, the defendants contended that:

• their product had been advertised alongside the plaintiffs' since the year 2000 and therefore the plaintiffs had waited too long before filing the suit;
  
  
• they held a valid drug licence, issued by the Indian government in July 2001, as well as a pending trademark application for FENTEL;
  
  
• the difference in the first letter of the competing marks ZENTEL and FENTEL was sufficient to distinguish both parties' products;
  
  
• the products could be dispensed only by prescription, thus reducing the risk of consumer confusion; and
  
  
• both trademarks were generic in character as the 'ent' portion of the marks referred to the word 'enterikos', which is Greek for 'intestines' and the component 'el' was drawn from the compound Albendazole present in both drugs.

The court dismissed the defendants' application and confirmed the injunction. It held that even assuming that the plaintiffs were aware of the defendants' use of the mark FENTEL since the year 2000, the delay in filing their lawsuit did not defeat their right to seek an injunction. Additionally, the plaintiffs' statutory rights arising from registration outweighed the defendants' rights in their pending trademark application. Referring to the alleged differences between the marks, the court reasoned that although the first consonant of each mark was not the same, this was not sufficient to allow consumers to distinguish between the two drugs.

The court followed the principles laid down by the Supreme Court in Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd. There, the Supreme Court highlighted the peculiarities of the Indian marketplace in relation to pharmaceuticals, namely the large illiterate or non-English speaking populace and the low degree of care exercised in dispensing medicines. In the case at hand, the court held that the fact that the medicines were sold only under prescription did not justify the defendants' attempt to deceive the public into purchasing their product instead of the plaintiffs'.

Lastly, the court dismissed the defendants' argument that the marks were generic as "far-fetched" and it briefly referred to the fact that the letter sequence 'el' did not appear in the compound name Albendazole.

Binny Kalra, Anand & Anand, New Delhi