Bombay High Court on Trade Mark Infringement: Interim Relief Confirmed.

Headnote:

The Bombay High Court confirmed ad-interim relief restraining the defendants from using the trade marks “ELGIMET”, “ELGIMET-SR 1/500”, and “ELGIMET-SR 2/500”, holding that there is prima facie infringement of the plaintiffs’ registered trade marks “GLIMET” and “GLIMET DS”. The Court observed deceptive phonetic and structural similarity between the rival marks and emphasized that medicinal products require strict scrutiny due to potential confusion among consumers. The interim relief against passing-off, however, was not granted at this stage.

Background:

• The plaintiffs, Laboratories Griffon Pvt. Ltd. and its licensee, hold registered trademarks “GLIMET” (1992) and “GLIMET DS” (1999) for medicinal preparations used in the treatment of diabetes.

• The defendants launched a product bearing the mark “ELGIMET-SR 1/500” and “ELGIMET-SR 2/500”, which the plaintiffs alleged was deceptively similar to their marks.

• Plaintiffs’ turnover from sales of products under their marks was substantial, showing established reputation and goodwill. A decoy purchase revealed that Defendant No. 2 marketed the impugned products.

• Defendant No. 1 sought to settle amicably and did not oppose the interim relief; Defendant No. 2 filed a written statement denying phonetic or visual similarity and citing differences in pricing and prescription-based sale.

Court’s Observations:

• The plaintiffs’ marks are distinctive combinations of active pharmaceutical ingredients (Glibenclamide/Glimepiride and Metformin), creating exclusive rights over the combination.

• The impugned mark “ELGIMET” interchanges the first two letters of “GLIMET” and prefixes an “E”, resulting in deceptive similarity, particularly for consumers with imperfect recollection.

• The test of likelihood of confusion considers totality of the mark, nature of goods, mode of purchase, and class of consumers; differences in pricing or channels of sale do not negate confusion for prescription medicines.

• Defendant No. 2’s claim of honest adoption and investment in marketing was unsupported by evidence.

• Balance of convenience favors plaintiffs due to long-standing registration and established goodwill, whereas defendants appear to be late entrants.

• Interim relief against passing-off was not granted as there was no prima facie misrepresentation by Defendant No. 2.

Order:

The ad-interim relief granted on 4 September 2024 was confirmed, restraining the defendants from manufacturing, marketing, distributing, selling, or using the trademarks “ELGIMET”, “ELGIMET-SR 1/500”, and “ELGIMET-SR 2/500” or any deceptively similar mark in relation to their medicinal and pharmaceutical preparations.

Legal Provisions Discussed:

• Trade Marks Act, 1999 – Sections 134 (jurisdiction) and passing-off principles.

• Trade and Merchandise Marks Act, 1958 – Part A registration, Section 9 on distinctiveness.

• Judicial principles from Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd, (2001) 5 SCC 73, and prior Bombay High Court rulings on medicinal trademarks.

Citation: 2025:BHC-OS:21288

Case: Laboratories Griffon Pvt. Ltd. & Another v. Adwin Pharma & Another

Court: High Court of Judicature at Bombay, Commercial Division

Coram: Sharmila U. Deshmukh, J.

Date of Decision: 18 November 2025

Interim Application (L) No.: 27480 of 2024

Commercial IP Suit No.: 225 of 2024