ZENTEL VERSUS FENTEL: HC restrains manufacture, sale of medicine for violation of trademark

New Delhi: In a relief to the pharmaceutical giant in a trademark matter, the Delhi High Court has recently restrained the manufacture or sale of Glaxo Smith Kline's (GSK) de-worming drug Albendazole (trade name ZENTEL) tablets and syrups sold under deceptive trade name FENTEL by a manufacturer.

Albendazole sold under the trade name Zentel is well known as de-worming drug exclusively for human use which is to be sold only on written prescription by a registered medical practitioner (Schedule H Drug).

Recently, Justice Sanjeev Narula ordered a permanent injunction from manufacturing, selling or offering for sale pharmaceutical preparations under the trade name FENTEL or any other mark which may be deceptively similar to GSK trademark ZENTEL.

The direction came following a petition filed by GSK when its attention was drawn towards the manufacture and marketing of Albendazole preparation under the mark FENTEL by Faith Pharmaceuticals Ltd and another Samson Laboratories (P) Ltd.

The firm engaged in making FENTEL contended that GSK was fully aware of the launch and marketing of FENTEL, as the advertisements of both the Companies were appearing side by side in same journals and magazines. In spite of the knowledge of the products manufactured and marketed under the trademark FENTEL, since the year 1998, GSK chose to wait and file the present suit on 9th July 2003. Thus on the ground of delay, laches and estoppel, GSK should not be entitled to relief of injunction and the present suit is liable to be dismissed.

After hearing both the parties, the court while referring to previous cases of similar nature dealt by the Supreme court noted that on comparison of the two competing marks ZENTEL and FENTEL, one can easily perceive that there are overwhelming visual, structural and phonetic similarities between the two marks. Both the marks are being used in relation to drugs used for the treatment of the same condition i.e. for de-worming. Both drugs are Schedule H drugs.

Such drugs are sold by the chemist only on the prescription of a doctor and are not available across the counter. Nevertheless, one cannot lose sight of the ground realities that exist in India where the drugs meant to be sold only on the prescription of a medical practitioner are available across the counter.

The court ruled in favour of GSK and held;

"a decree of permanent injunction passed in favour of GSK and against the Defendant whereby Defendants, their Directors, Officers, servants, agents and representatives are restrained from manufacturing, selling or offering for sale pharmaceutical preparations under the trade name FENTEL or any other mark which may be deceptively similar to GSK's trademark ZENTEL and from doing any other such thing so as to cause confusion or deception amounting to passing off of the goods and business of the Defendants as and for those of GSK."

The court further added;

"An order to delivery up is passed in favour of GSK directing the Defendants to handover the goods seized by the Local Commissioner which are lying in superdari with the Defendants."