Case Title: GlaxoSmithKline Pharmaceuticals Ltd. vs. Horizon Bioceuticals Pvt. Ltd.
Date of Order: March 22, 2023
Case No.: C.O. (COMM.IPD-TM) 6/2023
Name of Court: High Court of Delhi
Name of Judge: Honourable Mr. Justice C. Hari Shankar
Brief Facts
GlaxoSmithKline Pharmaceuticals Ltd. (Plaintiff) filed a suit against Horizon Bioceuticals Pvt. Ltd. (Defendant) over the alleged infringement of its registered trademark 'COBADEX.' The plaintiff, a well-known pharmaceutical company, had been using the mark for its range of multivitamin supplements. The defendant challenged the plaintiff’s trademark registration by filing Rectification Petition No. 273818 before the Registrar of Trade Marks, Calcutta, seeking to cancel the registration, claiming that 'COBADEX' was generic and lacked distinctiveness. The dispute resulted in multiple proceedings, including C.O. (COMM.IPD-TM) 6/2023 and CS (COMM) 8/2023, both pending before the Delhi High Court.
Issues
The primary issue before the court was whether the plaintiff’s trademark 'COBADEX' was distinctive and validly registered, and whether the defendant’s use of a similar mark constituted infringement. Another issue was whether the rectification proceedings pending before the Trade Marks Registry should be transferred to the Delhi High Court for simultaneous adjudication.
Submissions of Parties
The plaintiff argued that 'COBADEX' had acquired distinctiveness through long and extensive use in the pharmaceutical sector and that the defendant’s attempt to use a deceptively similar mark would lead to confusion among consumers. The plaintiff also contended that the rectification petition was a strategy to delay the infringement proceedings.
The defendant contended that 'COBADEX' was a generic term derived from the ingredients of the multivitamin supplement and was therefore not eligible for trademark protection. It argued that the plaintiff could not claim exclusivity over a descriptive term and that the rectification petition was a legitimate attempt to challenge an improperly granted trademark.
Reasoning and Analysis of Judge
The court analyzed whether 'COBADEX' had acquired secondary meaning beyond its descriptive nature, making it distinctive. The court considered precedents on generic terms and trademark protection, holding that a mark primarily descriptive in nature can attain distinctiveness through prolonged and exclusive use. The court observed that the plaintiff had produced evidence of market recognition, advertising, and substantial sales to demonstrate that 'COBADEX' was associated with its brand.
The court also addressed the issue of simultaneous proceedings. It invoked Rule 26 of the Delhi High Court Intellectual Property Rights Division Rules, 2022, and directed the Registrar of Trade Marks, Calcutta, to forward the records of Rectification Petition No. 273818 to the Delhi High Court, ensuring a consolidated hearing.
Decision
The court directed the transfer of the rectification petition to the Delhi High Court and ordered its listing alongside the pending infringement suit. It emphasized that simultaneous adjudication would ensure consistency in the determination of rights over the trademark 'COBADEX.' The matter was set for further arguments, with interim relief remaining in favor of the plaintiff.
