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Structural And Phonetic Similarity Of Trademarks And Interim Injunctions

Trademark infringement cases often hinge on the concept of deceptive similarity, where the disputed marks are not identical but so similar that they are likely to cause confusion. This article explores a specific legal dispute involving the trademarks "ZITA-MET" and "XIGAMET," focusing on the legal principles related to structural and phonetic similarity whereby interim injunction was granted to the Plaintiff.

Factual Background:
The Plaintiff, a pharmaceutical company, markets an anti-diabetic drug under the registered trademark "ZITA-MET." Initially, from April 2013 to January 2014, the drug contained Sitagliptin as the active molecule. In 2015, the Plaintiff modified the drug's composition to include Teneligliptin and Metformin. The trademark "ZITA-MET" is registered in Class 5, which covers pharmaceuticals.

In August 2020, the Plaintiff discovered that Defendant No.1 had applied for the trademark "XIGAMET" also in Class 5. The Plaintiff filed a suit alleging trademark infringement, arguing that "XIGAMET" was deceptively similar to "ZITA-MET."

Defendant No.1 countered that a court order from Srinagar, dated February 19, 2024, prevented the Plaintiff from interfering with the sale and distribution of "XIGAMET." Furthermore, the Defendant challenged the jurisdiction of the current court, claiming that they did not manufacture, sell, or stock their products within the court's territorial jurisdiction.

Legal Principles:
  1. A. Structural and Phonetic Similarity: The determination of deceptive similarity involves both structural and phonetic analysis. Structural similarity considers the visual appearance of the marks, including the number of letters, their arrangement, and any distinctive elements. Phonetic similarity assesses how the marks sound when pronounced. Courts consider the overall impression created by the marks rather than focusing on specific elements.
  2. B. Interim Injunction: An interim injunction is a provisional remedy granted to prevent irreparable harm to the plaintiff during the pendency of a lawsuit. Courts considered several factors when deciding on interim injunctions i.e. Prima facie case, Balance of convenience, and Irreparable harm.

Analysis of the Court:
  1. Structural Similarity: The trademarks "ZITA-MET" and "XIGAMET" both consist of seven letters and share the suffix "-MET." This suffix could be interpreted as indicative of the common ingredient Metformin, used in anti-diabetic medications. The prefixes "ZITA-" and "XIGA-" both follow a consonant-vowel-consonant pattern, enhancing their structural resemblance.
  2. Phonetic Similarity: Phonetically, "ZITA-MET" and "XIGAMET" sound remarkably similar. The initial sounds "ZITA" and "XIGA" can be easily confused, especially in the pharmaceutical context where precise pronunciation by consumers might not be common. This phonetic resemblance increases the likelihood of confusion, particularly among consumers who might rely on oral recommendations or prescriptions.
  3. Likelihood of Confusion: Given that both trademarks are used for anti-diabetic drugs, the potential for confusion is significant. The similarity in structure and phonetics can lead to mistaken purchases, adversely affecting consumer safety and the Plaintiff's business. The average consumer, even with a degree of attentiveness, might not distinguish between the two marks, especially when faced with handwritten prescriptions or verbal instructions.

Interim Injunction:
The Court observed that the Plaintiff has established a prima facie case of trademark infringement by demonstrating the deceptive similarity between "ZITA-MET" and "XIGAMET." The balance of convenience favors the Plaintiff, as allowing the continued use of "XIGAMET" could cause substantial harm to its business reputation and consumer trust. The potential for irreparable harm is considerable, given the risk of consumer confusion in the pharmaceutical market. Accordingly interim injunction was granted to the Plaintiff.

In conclusion, the structural and phonetic similarities between "ZITA-MET" and "XIGAMET" create a high likelihood of consumer confusion, justifying the grant of an interim injunction. The Plaintiff has demonstrated a prima-facie case of trademark infringement on the basis of phonetic and structural similar between the competing Trademarks in question , resulting in grant of interim injunction in favour of Plaintiff.

Case Citation: Glenmark Pharmaceuticals Ltd vs Gleck Pharma Opc Pvt Ltd.: 13.06.2024: Commercial IP Suit No. 30149 of 2023:2024:BHC:OS:8628: Firdosha P.PooniwaliaH.J. .

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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