Bombay High Court Restrains Syngex Pharma From Using 'GEXCAL' Over Similarity With Alkem's 'GEMCAL'

The Bombay High Court on 29 October restrained Syngex Pharma Private Limited from using the trademark 'GEXCAL' for pharmaceutical and medicinal preparations, holding that it is prima facie deceptively similar to Alkem Laboratories Limited's registered trademark 'GEMCAL'.

A Bench of Justice Madhav J. Jamdar passed the ad-interim order while observing that the rival marks are deceptively similar phonetically, structurally and visually. He observed:

“I am of the prima facie view that the likelihood of confusion between the rival marks cannot be disregarded. The potential consequences of such confusion, particularly in relation to pharmaceutical preparations, weigh in favour of protecting the interests of the public.”

Alkem approached the Court alleging trademark infringement and passing off. It claimed that it adopted the 'GEMCAL' mark in 2000 and holds 14 registered trademarks covering the mark and its family of marks under Class 5. It stated that it launched its product bearing the 'GEMCAL' mark in July 2000. The product contains the generic salt compositions Calcitriol, Calcium Carbonate and Zinc Sulfate.

Further, the company submitted that it discovered in January 2021 that Syngex Pharma had applied for registration of the mark 'GEXCAL'. It alleged that Syngex had merely replaced the letter 'M' in its mark with 'X', which did not materially alter the overall similarity between the rival marks.

It also pointed out that Syngex had applied for registration of 'GEXCAL' in 2018, but the application was abandoned after it failed to file a counter-statement to Alkem's opposition.

Syngex subsequently applied for registration of 'SYNGEX'S GEXCAL' in December 2024, claiming use of the mark since October 2018.

The Court noted that Alkem was the registered proprietor of 'GEMCAL' and had placed sufficient material on record to prima facie establish the reputation and goodwill associated with the mark.

Referring to the Supreme Court's judgment in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Bench observed that deceptive similarity between medicinal products must be examined with greater care and caution, considering public health and the potentially serious consequences of confusion.

Accordingly, the High Court restrained Syngex Pharma and the other defendants from manufacturing, selling, stocking, advertising, marketing or using 'GEXCAL' or any identical or deceptively similar mark in relation to pharmaceutical and medicinal preparations, pending the hearing and final disposal of the suit.

The ad-interim relief will continue until the next hearing on 17 December.