The Bombay High Court has restrained herbal product maker Alex World Class Products Pvt Ltd from using the trademark ‘Alex’ for its product and directed the Jaipur-based company to hand over the domain name to Glenmark Pharmaceuticals Ltd, until further orders.
The court posted the matter for further hearing on December 5.
“This court is convinced that in the light of the position of law and the material brought to the notice of this court, a strong prima facie case is made out by the plaintiff (Glenmark) and if the ad-interim reliefs, as claimed, are not granted at this stage, the plaintiff will continue to suffer irreparable loss,” Justice Manish Pitale observed in a seven-page order.
Advocate Hiren Kamod, who appeared on behalf of Glenmark, argued that the company had been using the trademark since 1990 and that there were as many as nine registrations in its favour.
Glenmark also submitted that the first registration was dated June 14, 1988, even as the herbal product maker was incorporated only in 2018.
The Mumbai-based listed pharmaceutical firm also said its revenue from the brand was about Rs 108 crore during financial year 2021-22 and that the company had spent a substantial amount in sales promotion of the ‘Alex’ brand products, including cough syrups and lozenges.
“The sales figure was brought to the notice of this Court, which shows the extent of goodwill of the product of the plaintiff in the market, and it clearly shows that use of the mark ‘Alex’ on the products of the defendants would have the tendency of giving unfair advantage to the defendants,” the court said in its order on October 20.
In February 2021, Glenmark came across the similarly named products and issued a cease-and-desist notice to the Jaipur-based company on March 19 of that year.
However, in its response to the notice, the respondent (Alex World Class Products) claimed that its products were ayurvedic and herbal as opposed to the pharmaceutical ones of the Glenn Saldanha-promoted company.
The herbal-product maker’s argument – that the word ‘Alex’ is a house mark – is not sustainable, since it clearly infringed upon its registered trademark, Glenmark argued.
Under intellectual property rights law, a house mark refers to the trademark that a company uses to identify its commercial operations.