HC bars Cipla's Gluco-D branding to avert confusion with Zydus's Glucon-D

Cipla argued that there can be no question of any confusion between the marks as Cipla’s product reads ‘Prolyte Gluco-C ++’ and ‘Prolyte GlucoD ++’

The Delhi High Court on July 3 passed an interim order restraining Prolyte, a brand owned by Cipla from using the words ‘Gluco-C’ or ‘Gluco-D’ for their glucose powder brands as they are deceptively similar to the Zydus wellness’ marks ‘Glucon-C’ and ‘Glucon-D’.

The order was passed in a suit for trademark infringement initiated by consumer brands company Zydus Wellness against pharma giant Cipla, alleging that they were using a deceptively similar mark for their glucose powder brand.

The company had filed an application asking the court to restrain Cipla from using the words ‘Gluco-D’ and ‘Gluco-C’ till the suit is decided by the court.

Zydus argued that ‘Gluco-D’ is visually and phonetically similar to ‘Glucon-D’ and Cipla has merely deleted an ‘N’. Even the hyphen between Gluco/Glucon and D has been replicated.

The company contended that Cipla also adopted the feature of a vertical slanting indented edge with the words ‘instant energy’ on a yellow background. Zydus contended that it is a market leader in the energy drink product range, with its GLUCON-D Tangy Orange commanding 74 percent of the market. The mark ‘GLUCON-D’ has, therefore, become a source identifier for the company.

Zydus alleged that Cipla was marketing its glucose product under the name ‘Prolyte’ and has, with clear mala fide intent, now started using ‘Gluco C ++’ and ‘Gluco D ++’ alongside Prolyte‖, with the intent of creating confusion in the mind of the customer into believing an association between the products.

Cipla argued that the registrations granted to Zydus for brands Glucon-C and Glucon-D, are descriptive of the kind, quality and intended purpose of the products and hence could not have been registered as a trademark. Cipla therefore submitted that there could be no action from such entities for infringement of trademarks.

After taking the court through documents filed during the registration of ‘Glucon-D’ trademark, Cipla argued the registration was subject to the disclaimer that Zydus would not claim any right to exclusively for use of the letters C and D and hence ‘Gluco-D’ does not infringe upon ‘Glucon-D’.

Cipla argued that there can be no question of any confusion between the marks as Cipla’s product reads ‘Prolyte Gluco-C ++’ and ‘Prolyte GlucoD ++’

The court noted that the words ‘Prolyte’ prefixed to ‘Gluco-C’ and ‘Gluco-D’ does not distinguish it from ‘Glucon-D’ as ‘Gluco’ is the main ingredient in the name. The court thus held that ‘Gluco-D’ is deceptively similar to ‘Glucon-D’ and thus it infringes on Zydus’ registered trademark.

The court further noted that Zyudus’ disclaimer while registering the mark not to claim exclusivity of the letters ‘C’ and ‘D’ only means that they will not allege infringement of trademark solely on the ground that someone used the alphabet ‘C’ and ‘D’. Thus the court refused to accept Cipla’s contention on this aspect.

It was further held by the court that Zydus cannot allege that Cipla used the look and feel of ‘Glucon-D’ to deceive customers as many health drink brands have adopted a similar look and feel for their products.

On Cipla’s argument that ‘Glucon-D’ is a description of a product and cannot be registered as a trademark, the court held ‘extrapolating the name Glucon-D to understand it to refer to a product combining glucose and Vitamin D would require imagination, thought and perception. While the name could suggest the presence of glucose and Vitamin D, it cannot be said to describe it’.