INDIA: Court Rules in Favor of GlaxoSmithKline Group in Passing-Off Case

In the case of GSK CONSUMER HEALTHCARE S.A v. EG PHARMACEUTICALS & ORS., CS (COMM) 238/2019, the Honorable High Court of Delhi held on October 31, 2019, that when the plaintiff’s mark is wholly contained within the defendant’s trademark, a case of passing off will succeed.

The plaintiff, GlaxoSmithKline Group (GSK) is inter alia the registered proprietor for the mark OTRIVIN (wordmark) since 1956, bearing no. 176716 for the goods “nasal decongestant” in Class 5. Biochem applied and obtained registration for the BIOTRIVIN mark bearing no. 1399353 in Class 5 in 2005 on an “Intent to be used” basis and began using the impugned mark also for the goods “nasal decongestant.” GSK instituted the suit against three defendants: EG Pharmaceuticals (the manufacturer of the product bearing the impugned mark); Zydus Healthcare Pvt. Ltd. (which by then had acquired Biochem); and Biochem Pharmaceutical Industries Limited (the proprietor of the impugned mark) for a permanent injunction and passing off their goods as that of GSK.

GSK argued the deceptive similarity between its OTRIVIN mark and Biochem’s BIOTRIVIN mark. Biochem argued that it had adopted the impugned mark by using the prefix “BIO” from its company name, and therefore its BIO TRIVIN mark was different from GSK’s OTRIVIN mark. However, this argument was refuted by GSK, which noted that the mark applied for and being used on the products was BIOTRIVIN and not the two words BIO TRIVIN, showing the mala fide adoption by Biochem.

The Honorable Delhi High Court did not agree with the arguments put forth by Biochem and ruled that the balance of convenience was clearly in favor of the plaintiff. (The balance of convenience is an important prong of the three-pronged test for the grant of an injunction. The other two prongs are a “prima facie case in favor of the plaintiff” and “irreparable loss if injunction is not granted.” For assessing balance of convenience, the court must weigh metaphorically the loss that is likely to be suffered at the initial level of an injunction when an injunction is granted or not granted, and grant an injunction if the balance tips in favor of the plaintiff.) The court observed that the defendant’s product, sold under the BIOTRIVIN mark, would be confused by consumers as it would be considered as a variation of the plaintiff’s product OTRIVIN. The court found that the possibility of confusion itself entitled GSK to relief of injunction on the ground of passing off.

The court went on to state that this would undoubtedly cause damage to the goodwill of GSK’s product, and as a result, GSK would suffer irreparable injury. The court further stated that, in the present case, the interim injunction was necessary in the public interest. Thus, the court granted an interim injunction restricting the defendants from “manufacturing, offering for sale and advertising in any manner whatsoever any products under the mark BIOTRIVIN or any other mark similar or deceptively similar to the mark OTRIVIN of the Plaintiff.”