India: Trade Dress Compared In Pharma Trademark Dispute.

Last Updated: 19 May 2011
Article by Sonam Lhamu Bhutia

In a recent case, the Delhi High Court granted ad interim stay in favour of Glaxo Group Ltd & Anr (Plaintiff), thereby refraining Sunlife Sciences Pvt Ltd (Defendants) from manufacturing, selling and trading pharmaceutical preparations under the mark in question and also from using deceptively similar trade dress to that of Glaxo's during the pendency of the suit.

Glaxo Group is a well-known pharmaceutical company which has been selling pharmaceutical formulations under the marks BETNOVATE and BETNOVATE-C, CROCIN and ZINETAC/ZANTAC . They alleged that Sunlife Sciences were using the brand names B-NATE-C, CORSUN and ZEETAK which were deceptively similar to the marks used by Glaxo, not only in terms of the color scheme, get up and layout but also phonetically, to the extent of not only violating Glaxo's statutory rights but also causing confusion in the minds of the public by selling deceptively similar products.

In their written statement Sunlife Sciences raised doubts firstly, about the maintainability of the suit stating that it had not been instituted properly and was therefore liable to be rejected and as such the question of granting an ad interim stay in favour of Glaxo did not arise. Secondly, it was contended that Sunlife's office was based in Bangalore and their pharmaceutical products were not circulated in Northern India much less in Delhi and thus the Court did not have the jurisdiction to adjudicate upon the present suit.

Referring to the first issue, the Court, taking prima facie view of the matter, felt that the documents i.e. the power of attorney , which was duly notarized , and bore certificate of the notary public was enough to show that Glaxo had duly instituted the suit. The Court further said that even if the power of attorney were to be defective in nature, it could be rectified by the party later as it was just an irregularity. As with the second issue, the Court Observed that Section 134 (2) of the Trademarks Act, 1999, could be read as a proviso to normal law relating to jurisdiction of a court. According to this particular section, in case of a registered trademark , the plaintiff has the right to institute a suit at the place of its business unlike under normal Civil Law, whereby under Section 20, Code of Civil Procedure, the suit has to be instituted at the place of the defendant's residence, place of work or business or where the cause of action had wholly or partly, arisen. In the present case, the Court said that this was merely a technical objection, and since Glaxo had been carrying out its business in Delhi, it was proper that the suit had been instituted in Delhi. The fact that Sunlife Sciences contended that its office is in Bangalore did not deprive the present Court of the jurisdiction especially where it was alleged that Sunlife's pharmaceutical products were available in Delhi. Thus, referring to Sangram Singh vs. Election Tribunal, where it was observed, that a code of procedure is designed to facilitate justice and is not a penal enactment for punishment, therefore too technical interpretations of sections without room for elasticity of interpretation should be avoided, the Court dismissed the two objections.

The Court then went on to consider whether Glaxo satisfied the three requirements for grant of an ad interim injunction. These being :

  1. Does Glaxo have a prima facie case?
  2. Whether the balance of convenience is in its favour.
  3. In the event of an ad interim injunction not being granted, whether it will suffer irreparable loss.

The Court began by observing that all of Glaxo's trademarks were invented trademarks and had become highly distinctive due to long use for more than four decades. With respect to the fact that Sunshine had copied Glaxo's color scheme, getup and layout the Court said that it is an established principle of trademark law that in cases of infringement, the trade mark must be seen as a whole, the only exception being where the trademark comprises of generic element and distinctive element which includes part of the name of the salt or ailment and try to gauge the similarity to the other part of the trademark. In the present case the Court found that seeing the mark as a whole there was no difficulty in concluding that the products of Sunshine was a deceptively poor imitation of Glaxo's product.

Further, the Court stated that in trademark infringement cases , invented trademarks are not amenable to splitting and the only case where the it is split are in cases of ailments/ the drug is intended to cure or if the drug had any other feature which is related to the name of the element/ basic ingredient/ salt which is in question. Applying this principle to the present case, the Court found that Sunshine had completely copied Glaxo's marks without any justification seeing from all angles, be it from the name of the ailment or from the name of salt or from the name of chemical compound.

An important factor which the Court said should not be ignored was the fact that this was a pharmaceutical case and as per the Apex Court's indication in Cadila Health Care Limited Vs. Cadila Pharmaceuticals Ltd. the Courts must follow stringent view in such cases. The confusion which is brought upon consumers in pharmaceutical cases is not only inconvenient but is also life threatening as the consumption of spurious drugs could be fatal. The confusion therefore is against the Public interest doctrine, which outweighs everything else.

In Midas Hygiene Industries vs. Sudhir Bhatia & Ors , the Apex Court laid down that Injunction must follow where in an infringement case, there is mala fide and deliberate adoption without any justification.

In view of all of the above, the Court held that Glaxo had a prima facie case, the balance of convenience was also in its favour and it would suffer irreparable loss in case Sunshine were not restrained from using Glaxo's marks through an ad interim injunction.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.